Can a bottle shape that has been registered as a graphic representation of the 3D mark with a line in the bottle prove its use as a bottle shape with a blade of grass? No, the European Court ruled in its interesting judgment regarding the graphic representation of the 3D mark.
The European Court (CJEU) has made an interesting ruling regarding the graphic representation of a 3D brand (EU:T:2020:439). How accurate must the graphic representation of a 3D trademark be – and how accurate must the description fit?
Facts: bottle shape with blade of grass
This case, in which the European Court ruled two days ago, concerned a bottle shape which had been applied for and registered as a 3D trademark in 1996 by Underberg (Germany) with a blade of grass stuck in the bottle.
This trademark application was challenged by Przedsiębiorstwo Polmos Białystok (Poland) or, after a merger, by CEDC International sp. z o.o. (Poland) and referred to its own earlier 3 D trademark, which shows a very similar bottle shape with a line in the bottle. The applicant CEDC International also referred to the description of its own trademark registration, which described a blade of grass in the bottle. In addition, numerous pieces of evidence were submitted to prove the use of the earlier mark also for the bottle shape with a blade of grass in the bottle.
However, the opposition was rejected by both the Opposition Division and the Board of Appeal of EUIPO (August 2016, R 1248/2015-4, the “contested decision”). The description of a trademark must match exactly the submitted graphic representation of that trademark. However, if – as in the case of the earlier mark of CEDC International – a line is represented in the bottle, this is a line and not a blade of grass. The description of the earlier mark cannot be used here for clarification or clarification purposes, since it does not correspond to the representation showing a line and not a blade of grass as described.
A line is not a blade of grass
The European Court (CJEU) therefore had to decide the question of how to classify a graphic representation which differs slightly from the description of the mark. The court confirmed the view of the Board of Appeal. A graphic representation which lacks precision and clarity does not make it possible to determine the scope of the protection applied for, the CJEU ruled. The CJEU emphasized that the decisive factor for the scope of protection of the trademark is the way it is perceived solely on the basis of the sign in its registered form, and referred in this context to the Deichmann judgment concerning the sports shoe with dashed lines (EU:T:2018:7).
Only a more realistic representation of a blade of grass or the real representation of such a blade of grass stuck in a bottle could have clearly established its presence in the earlier mark, the Court specified. However, such a blade of grass did not fall within the exact scope of protection of the earlier mark.
The alleged presence of a blade of grass is not apparent from the representation, but only from the description. However, that description contains a misinterpretation of the representation, since it interprets the graphic element of the line beyond the visible, by stating that that element is a blade of grass. However, the object of protection is defined solely by the representation of the mark contained in the registration certificate, the CJEU emphasized. This could possibly be made more precise by the description – if the description corresponds to the representation. But this was not the case here.
No change in the scope of protection through use of TM
Moreover, the fact that the applicant had adduced evidence to prove use of the earlier mark also for the shape of a bottle with a blade of grass in it was not relevant, the Court added. The determination of the exact subject matter of the protection granted by a trademark cannot be changed in any way by the actual use of the trademark on the market, the CJEU ruled.
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