Beer manufacturer Erdinger tried to protect the Erdinger beer glass as a 3D brand – but in vain. In this interesting case, the CJEU clarified the IP protection of variants of common shapes, relevant for many 3D trademarks.
Even if this year’s Oktoberfest has to be cancelled due to the Corona situation, we would like to make an interesting contribution to the Oktoberfest theme. Beer producer Erdinger Weißbräu Franz Brombach (Germany) tried to protect the Erdinger beer glass as a 3D trademark – but failed with this request both before the EUIPO Board of Appeal and the Court of Justice of the European Union (CJEU).
IP Protection of variants of common shapes
In the interesting case of 2017 concerning the Erdinger beer glass – the Weissbräu Erdinger beer glass – which was to be protected as a 3D trademark, the CJEU specified the case law and principles for the protection of variants of common shapes. This is a relevant topic especially for 3D trademarks, which are often exactly one specific variant of already known shapes.
The CJEU emphasized that the mere fact that a shape is a “variant” of the usual shapes of this category of goods is not sufficient to refuse trademark protection (according to lack of distinctiveness under Article 7(1)(b) of Regulation No 207/2009). Rather, this assessment is always a case-by-case examination, explained the CJEU. However, according to the case-law, the more closely the shape applied for as a trade mark approximates to the shape in which the product concerned is most likely to be found, the more likely it is that the mark is devoid of any distinctive character, the Court added.
Erdinger beer glass – special design and experience?
The plaintiff Erdinger accused the Board of Appeal (the contested decision) of having failed to take into account the fact that the shape of the beer glass Weissbräu Erdinger differs significantly from conventional beer glasses in several respects. Erdinger’s beer glass has an extravagant and special design. In addition, the special shape of the glass is reminiscent of a trophy, which the consumer will also associate, as a special experience, so to speak.
But the court rejected this argumentation. Not only does the Erdinger glass show a slight narrowing in the middle of the lower part, but other manufacturers also did this with their glasses, as the internet research of the Board of Appeal had shown. And the decorations, which resemble the pattern of a soccer, do not make the Erdinger glass unique either, other comparable glasses also show similar patterns. The shape of the Erdinger beer glass is therefore usually the same as the large glasses available on the market, the CJEU held.
The fact that the Board of Appeal was unable to prove that there are no truly identical glass shapes on the market does not invalidate this assessment, the Court made clear.
Novelty or originality not relevant for distinctiveness
Moreover, neither novelty nor originality are decisive criteria for assessing the distinctiveness of a trademark, the CJEU added, referring to the 2010 judgment on the Lindt Golden Rabbit.
Even the plaintiff’s argument that she is the only company marketing the glass as a shape could not convince the CJEU. This marketing of Erdinger beer glass could not be interpreted as an indication of commercial origin. The design of the glass in question could – at most – be regarded as a new design and not as an indication of the origin of the goods in question because of its shape which differs slightly from the shapes already on the market.
The CJEU therefore dismissed the action and upheld the decision of the Board of Appeal, which had refused trademark protection for the Erdinger beer glass as a 3D mark on the grounds of lack of distinctiveness.
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