An amphora-like receptacle with a bead in the bottle shape may be protected as a three-dimensional Unionmark. On Wednesday, the Court of the European Union ruled, overturning the decision of the EUIPO. This is an important decision for 3D brands in the packaging sector.
The background to this decision is years of opposition proceedings between the plaintiff, the German Wajos GmbH, and the European Patent and Trademark Office (EUIPO) concerning trademark protection for an amphora-like vessel. In summer 2016, the EUIPO examiner refused the desired trademark registration and the Board of Appeal confirmed this refusal in February 2017 (R 1526/2016-1).
Trademark registration justified by visible bead in the bottle shape?
This decision has now been annulled by the Court of Justice of the European Union (CJEU). An amphora-like vessel with a bead in the shape of a bottle can be protected as a three-dimensional Unionmark. The disputed mark can be registered for the nizza classes 29, 30, 32 and 33 applied for – all classes containing liquid goods such as oils, coffee, tea, cocoa, non-alcoholic beverages, non-alcoholic cocktails and fruit drinks as well as alcoholic beverages such as beer and brewing products, wines and spirits. The decisive question was distinctiveness in relation to those goods. Since liquids require a bottle shape as an elementarily necessary packaging, a trade mark registration could only be justified by the visible bead in the shape of a vessel.
The Board of Appeal had found that that bead was technical and functional and had therefore excluded it as a characteristic identifying the product’s origin. The mark applied for is therefore devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.
Distinctive character of the Unionmark
According to case-law in the EU, the distinctive character of a trade mark must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the perception which the relevant public has of it. Accordingly, the applicant argued that its goods appealed to consumers in the exclusive, high-priced delicatessen sector, and that that group of consumers was well informed, attentive and circumspect. The CJEU contradicted this. According to the case-law, the relevant public in the field of everyday consumer goods in the food industry is essentially the average consumer, and that is also the case here.
In addition, the applicant argued that its bead-like ring or its aesthetic break edge was a special and memorable feature in terms of its design. That element is not purely functional, since it is not necessary for the storage of the mark applied for. However, according to EUIPO, the range of shapes of packaging in the relevant market segment is rich and the mark applied for does not differ significantly from the usual shapes.
Bottle shape must assert itself against strong competition
The court contradicted this view of the EUIPO. The CJEU expressly pointed out that market participants in the food industry are characterised by strong competition and are all confronted with the technical constraints of packaging goods for their marketing and must observe the necessary labelling. That makes the appearance and design of the packaging all the more important in order to distinguish it from the competition. Accordingly, it must be held that the average consumer is fully capable of perceiving the bead-like ring and the aesthetic break edge as an indication of their commercial origin.
Moreover, although, as the EUIPO rightly pointed out, the bead which separates the upper part from the narrower lower part is a technical and functional characteristic, that characteristic nevertheless confers an aesthetic value on the mark applied for. The Court stated that the trade mark applied for was an unusual character, in the customary manner of the trade, of a presentation of the goods in question. The CJEU stressed that even with a minimum degree of distinctiveness, the ground for refusal did not apply, and such a minimum degree was certainly present in the present case.
Finally, the CJEU annulled the decision of the EUIPO and the previous trademark refusal. Above all, this judgement is remarkable because, on the one hand, the court considers the bead in the shape of the vessel to be a technical and functional feature, but on the other hand it regards this feature as an element for presentation with an extraordinary character.
In this context, the following judgments are also worth reading:
First Time in China: Chivas granted Judicial Protection for their 3D Mark
Ritter Sport retains protection of its quadratic three-dimensional trade mark
Nepresso coffee capsules lose trademark protection in Germany – for the moment
Technical function determines the design: Exclusion from IP rights?
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Curia Europe: EU:T:2018:638 (in German)
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