Carnival Biscuit and the Distinctive Shape

Supreme Administrative Court takes a stand on product appearance and survey evidence in a yearbook trademark case.

The Supreme Administrative Court of Finland (SAC) has recently published the yearbook decision KHO 2013:94 regarding the registration of a bisquit as a trademark. This is the first time the SAC publishes a decision relating to trademark protection of a product appearance as a precedent.

The matter also dealt with the assessment of survey evidence concerning acquired distinctiveness post-dating the application date. The subject matter of the case was an application filed in 2007 to register the shape of the well-known “Carneval” biscuit as a trademark, which the SAC subsequently accepted after finding that it had acquired distinctiveness through longstanding and extensive use. The SAC also provided a welcome confirmation that survey evidence post-dating the application date is admissible and must be taken into account when examining acquired distinctiveness.

The long life of a biscuit

For the benefit of those readers not familiar with the Carneval biscuit, it could be noted that the Carneval biscuits have been sold in Finland since 1925 under the same name and with the same shape and appearance as the current trademark registration. The name and shape have stayed the same despite several changes in the ownership of the manufacturer over the years. The biscuits have also enjoyed a steady popularity for a long time.

The graphic representation of the application was depicted as below, i.e. a square with wavy edges and a film-like surface.

A key piece of the extensive evidence provided by the applicant to prove acquired distinctiveness in addition to marketing material and proof of use was a market survey, which was conducted approximately a year after the application had been filed. The survey showed that 72 percent of the respondents  recognized the biscuit based on its appearance. A significant part of the respondents, namely 36 percent, were also able to identify the name of the product in question as ‘Carneval’.

 The trademark application was initially refused by both of the National Board of Patents and Registrations (NBPR) and the NBPR Board of Appeal. These decisions rejected both the inherent and acquired distinctiveness of the biscuits’ appearance, i.e. a square with wavy edges and a film-like surface. The inherent distinctiveness was dismissed based on the argument that the shape did not differ significantly enough from other biscuit shapes on the market to be recognized as a trademark and indication of origin.

The acquired distinctiveness was also dismissed based on the more controversial ground that the survey was inadmissible as evidence due to being conducted a year after the application date. The evidence pre-dating the application date was not considered sufficient when coupled with the nature of the subject trademark.

When the case was appealed to the Supreme Administrative Court, the central issues were the admissibility of survey evidence post-dating the application date and the general criteria for registering a shape and appearance of a good as a trademark.

Criteria for registering the appearance of a good as a trademark 

The SAC first addressed, albeit rather summarily, the general criteria for shapes of goods to be eligible for trademark registration. The primary hurdle that the shape of a product needs to overcome in order to be eligible for trademark protection, both through acquired and inherent distinctive character, is that it must not consist exclusively of a shape resulting from the nature of the goods themselves, which is necessary to obtain a technical result or which give substantial value to the goods. This type of shapes can never be registered even through acquired distinctiveness.  

In addition to passing this first hurdle, the shape must generally depart significantly from the customary shapes of goods of that type in order to be perceived as a trademark by the relevant public. A shape that does not fulfill this criterion can, however, be registered if it can be shown to have acquired distinctiveness through use.

Regarding the prima facie eligibility of the ‘Carneval’ biscuit’s shape for trademark protection, the SAC firstly found that it did not consist solely of the natural shape of the goods in question. This is a well-founded decision since the wavy edges and film-like surface of the square cannot be said to serve any particular technical purpose or be result of the natural shape of a biscuit.

On the other hand the product did not depart significantly enough from the other shapes of biscuits on the Finnish market to be considered inherently distinctive. The shape could therefore be registered, but only if it was shown that it had acquired distinctiveness through use.

Survey evidence post-dating the application date

The question regarding the distinctive character acquired through use turned on the issue whether the above mentioned survey evidence was admissible as evidence despite the fact that it post-dated the application date. The issues regarding the admissibility of evidence post-dating the application stems from the trademark office’s fairly rigid interpretation and practice that no evidence from the time after the application date is given any relevance regardless of the circumstances and nature of the evidence.

When it comes to marketing material and economic data such as sales figures, there are naturally stronger grounds to give little weight evidence that relates to the time after the filing date due to the fact that this later use tends to have less evidentiary value concerning the situation prior to the application date. Market surveys on the other hand do not constitute evidence of use as such that would generate future awareness of the trademark, but rather evidence of the effect of prior use. This means that a blanket ban on any evidence that is dated later than the application date, without any regard as to the actual value or significance of the evidence, is clearly unfounded.

The admissibility of evidence post-dating the application date has previously been recognized in EU case law, e.g. in the Aire Limpio case from the Court of Justice (C-488/06 P). The CJEU held that the fact that the data in question concerned to a period subsequent to the date of filing the application was not sufficient to deprive those data of their evidential force when it enables conclusions to be drawn on the situations as it was on the application date.

Based on this case law, the Supreme Administrative Court held that the market survey was admissible in this case even though it had been conducted a little over a year after the application date. According to the SAC, there was no indication that the level of awareness shown by the survey would be the result of any particular marketing efforts during that year.

There was also no evidence of any significant changes in the Finnish biscuit market or other circumstances that could justify a conclusion that the awareness of the trademark in question would have changed in any meaningful way between the application date and the time of the survey. The SAC therefore found that the Carneval biscuit’s shape had acquired distinctiveness before the application date based on its longstanding and extensive use.

 Jukka Palm
IP Lawyer LL.D
Berggren Oy Ab, Finland