The European Court of Justice (ECJ) has dismissed an appeal against a declaration of invalidity of a figurative mark which consisted of a three-dimensional representation of a cylindrical bottle.
Signs are unacceptable for registration as a trade mark if they lack distinctive character (Article 7(1)(b), Community Trade Mark (CTM) Regulation (207/2009/EC)).
Only a mark that departs significantly from the norm or customs of the sector, and so fulfils its essential function of indicating origin, does not lack distinctive character for the purposes of Article 7(1)(b) (Mag Instrument v Office for Harmonisation of the Internal Market (OHIM).
V obtained a three-dimensional CTM registration covering alcoholic and non-alcoholic drinks, including water, for a cylindrical glass bottle with a silver cap of the same diameter as the bottle. N, which markets vodka in a similarly shaped bottle, contested the validity of the mark under Article 7(1)(b). OHIM’s cancellation division rejected the invalidity action, holding that the shape of the mark was uncommon, diverged significantly from existing bottles in the beverages market and so could function as a trade mark.
The OHIM Board of Appeal annulled the decision and held that the three-dimensional CTM for a cylindrical bottle was registered invalidly because it was devoid of distinctive character. As beverages are always sold in bottles, cans or other forms of packaging marked with a label or a verbal or graphic sign, consumers would first look at the label in order to identify the origin of the product. The mark was also similar to beverage bottles already on the market.
V applied to the EU General Court to annul the Board of Appeal’s decision. The General Court upheld the Board of Appeal’s decision. V, with the support of the International Trademark Association (INTA), appealed, arguing that the General Court had erred by unduly imposed a burden on V of proving the distinctive character of the mark despite the mark enjoying a presumption of validity through registration, and by not requiring the original complainant, N, to provide evidence of non-distinctiveness. INTA criticised the conclusions drawn by the General Court on whether the mark departed significantly from the norms of the relevant sector to afford it the requisite distinctiveness for registration.
The ECJ dismissed the appeal. It rejected all of V’s grounds of appeal.
The General Court’s independent examination of the mark was sufficient for it to rule on its distinctiveness, and it had neither compelled V nor required N to present evidence in this regard.
The General Court’s consideration of the individual elements of the mark did not preclude a sufficient analysis of the overall impression created by the mark. INTA’s criticisms of the conclusions drawn by the General Court were irrelevant as, in the absence of allegations of distortion of the evidence before the General Court, appeals to the ECJ lay on points of law only.
The General Court’s assessment not only analysed the mark’s components, the transparent cylindrical body and the non-transparent cap, and correctly concluded that they were devoid of distinctiveness, but also considered whether as a whole the mark could be distinctive because of the combination of its elements.
However, the General Court could not find any evidence to this effect, as the mark was simply the sum of its non-distinctive parts.
The ECJ denied that the General Court did not define the norms and customs of the beverages sector against which to establish whether the three-dimensional mark had distinctive character. The General Court relied on well-known facts: that the majority of the bottles in the sector have a cylindrical section and that their caps are usually made of a different material and have a different colour.
According to the General Court, the three-dimensional mark was a mere variant of a common shape of a bottle, which was not sufficient for the mark to have distinctiveness within the market. The ECJ found that the General Court was in compliance with relevant case law on the criteria for assessing the distinctive character of three-dimensional marks. The key question was whether the mark permitted average consumers of the product to distinguish it from those of other undertakings.
This decision demonstrates an apparent inconsistency between the threshold at the registration stage when applying to protect a shape of a product as a trade mark, and the threshold to maintain the rights in a three-dimensional mark when its validity is challenged. Following this decision it may become more difficult to register common bottle shapes as trade marks. The ECJ reiterated that average consumers are not in the habit of making assumptions about the origin of products based of the shape of the goods or their packaging in the absence of any graphic or word element, and so it may be more difficult to establish distinctive character in relation to such three-dimensional marks.
Case: Voss of Norway ASA v OHIM, Case C-445/13 P.
First published in the July 2015 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.