No distinctiveness: 3D mark bottle shape with label

The application for a 3D mark on a bottle shape with label was rejected. According to the CJEU, the sign is devoid of any distinctive character in the beverage sector, which is characterized by a wide variety of packaging shapes.

The trademark applicant is Brasserie St Avold (France). In March 2018 it applied for a 3D sign as an EU trademark as an international registration designating the European Union.

The main beverages claimed were beverages, including alcoholic beverages such as beer and wine, in the Nice classes 32 and 33. This sign applied for as a 3D trademark showed the shape of a dark bottle – with label.

TM application: lack of distinctiveness

However, the desired trademark application for a bottle shape with label was rejected by the European Trademark Office (EUIPO) due to lack of distinctiveness. The shape of a dark bottle is absolutely common in the beverage industry. Furthermore, a bottle is the most obvious form of packaging for alcoholic and non-alcoholic beverages. Consequently, the shape of the bottle can only be considered distinctive if it departs significantly from the norm. That is not the case here.

The brasserie appealed against this decision and brought the case before the Court of Justice of European Uni0n (CJEU/CFI). In particular, it argued that the claimed trademark rights refer to a specific label that is unmistakably attached to a bottle, and not the bottle shape itself.

CJEU: Bottle shape with label

In the light of those facts, the European Court found, first of all, that the sign applied for was in fact a three-dimensional sign, as represented in the application for registration and the application for protection, namely as a bottle with a crown cap and label.

However, a bottle shape cannot be protected as a 3D mark Bottle shape with label, the CJEU decided.

The average consumer normally does not proceed to assume the origin of a product on the basis of its shape or the shape of its packaging in the absence of any graphic or word element, the Court explained. In such a case – such as the present one – it may be more difficult for a 3D mark to prove distinctiveness than in the case of a word or figurative mark. In this context, the CJEU referred to the case law on 3D marks (see ECJ judgment Wajos, C-783/18 P, 2019).

In fact, however, the shape of the dark-colored bottle crowned by a cap was common in the beverage industry, i.e. by no means unusual in the industry.

Label: large variety of shapes

Nor can the label on the bottle serve as an indication of origin. For the standard and habits in the field of labels are characterized by a great variety of forms of representation, the court found.

Therefore, the plaintiff could not rely on one form of the label, but a label comprises all forms that the consumer is used to seeing on the market, the CJEU ruled. Moreover, the average consumer will expect the label to be the medium for information about the products concerned, including an indication of their commercial origin, but not the origin per se. Consumers would therefore perceive the sign in question ”bottle shape with label” as an aesthetic, decorative or functional refinement of the products in question which, moreover, does not differ significantly from the standards of the industry.

The CJEU therefore dismissed the action in its entirety.

Conclusion

This ruling is another important contribution to the case law and trademark protection of a bottle shape. Although a gold-plated bottle shape was granted trademark protection by the CFI in May 2019, the court rejected trademark protection for the distinctive bottle shape for Franconian wine in September 2019. In the already cited Wajos judgment, the ECJ had also granted trademark protection for a bottle shape with a bulge on the bottle neck.
These different judgements can be used for trademark applications and also for appeals in the field of bottle shape. Please feel free to contact us.