Katerina Livi
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Everyday IP – acquired distinctiveness of chocolate brands in Switzerland

First published 28 March 2024 by Katerina Livi

With Easter approaching, I recently found myself strolling though the supermarket with my kids and overheard them discussing which chocolate bunnies and/or chocolate eggs they would love to find in their baskets this year.

While also comparing the options myself, I quickly realized that there was no other company besides Lindt that offered chocolate bunnies in gold-coloured foil and that Ferrero`s products dominated the chocolate aisle of our supermarket.

While Lindt is the owner of the following three 3D marks, which represent the packaging of chocolate bunnies, Ferrero inter alia owns the following kinder (fig.) trademark:

Now you are probably wondering how Ferrero managed to secure the trademark kinder (fig.), despite its elements not being inherent distinctive, particularly the only verbal element being purely descriptive for the target consumers (kinder is German and means children) and how Lindt was able to register 3D trademarks representing the shape of a golden bunny / the shape of the packaging of such chocolate products.

This is where acquired disctinctiveness comes into play. Ferrero's and Lindt`s aformentioned marks  – which are not inherently distinctive – were registered as trademarks because their owners successfully demonstrated that these signs have acquired disctinctiveness through use in Switzerland. But what is acquired distinctintivness and how can it be used to obtain trademark protection in Switzerland?

According to Art. 2 lit. a of the Swiss Trade Mark Protection Act (TmPA), signs that belong to the public domain are excluded from trademark protection, except where they have become established as a trademark through use for the goods or services for which they are being claimed. A sign has become established in trade if it is understood by a significant proportion of the consumers of the goods/services as an individualizing reference to a specific company. The acquired distinctiveness of a sign can be derived from facts that allow conclusions to be drawn about the perception of a sign by the public.  These include, for example, many years of significant sales made under a sign or intensive advertising efforts.

However, direct evidence through a representative demoscopic survey of the relevant public is also possible and, according to the Swiss Federal Supreme Court, the most reliable way to show the acquired disctinctiveness of a trademark through use in Switzerland.

By the way, in the end, my children`s votes neither went to the kinder (fig.) suprise eggs nor the Lindt gold bunny, but rather to the white chocolate unicorn and the football playing chocolate bunny, both of which are offered under the supermarket`s own-brand.

With that said, I wish you all an eggcellent Easter with hopefully many different types and brands of chocolate animals!

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