• Skip to main content
  • Skip to primary sidebar
  • Skip to footer
+49 (0) 69 / 606 278 – 0
[email protected]
Contact form
Patent- & Rechtsanwaltskanzlei

Patent- & Rechtsanwaltskanzlei

  • Deutsch

+49 (0) 69 / 606 278 – 0

  • Facebook
  • Twitter
  • Instagram
  • LinkedIn
  • xing
  • Email
MENUMENU
  • Services
    • Advice On Protective IP Rights
    • Patent Application /TM Registration
    • Enforcement Of IP Rights
    • Defence Against IP Rights Enforcement
    • Costs
  • Company
    • Fields of Law
      • Patent Law
      • Utility Model Law
      • Employees‘ Inventions
      • Trademark Law
      • Design Law
      • Trademark and Product Piracy
      • Expert Opinions
    • Our Law Firm
      • Dr. Karl-Hermann Meyer-Dulheuer
      • Dr. Tim Meyer-Dulheuer
      • Dr. Klaus Zimmermann
      • Zhichao Ying
      • Dr. Christoph Hölscher
    • Commitment
  • Contact
    • Where To Find Us
    • Write us!
    • Request call back
  • Blog

Gold-plated bottle shape protected as 3D union trademark

9. May 2019

The shape of a gold-plated bottle as well as a pink coated bottle can be protected as a 3D Union trademark. So decided yesterday the court of the European Union. This is another important judgment for three-dimensional union marks in the packaging sector.

Shape of a bottle as 3D union trademark

Golden shape of bottle 3D Union trademark

This decision is based on two invalidity proceedings relating to trade mark protection for the shape of a bottle with a special coating. In 2013 Sandro Bottega (Colle Umberto, Italy) twice applied for a 3D union mark with coated bottle shapes, one with a gilded colour, one with a shimmering pink colour. Both marks were registered in Nice Class 33 for, inter alia, ‘alcoholic beverages; spirits’ and many other beverages.

Plaintiff Vinicola Tombacco (VI.TO.) Srl (Trebaseleghe, Italy) brought actions for annulment against these two trade mark registrations. These actions were dismissed both by the EUIPO and now by the European Court. It is undisputed between the Plaintiff and EUIPO that the shape of the bottles called “collio” can be considered as a simple variant of shapes that have existed since “unimaginable” times.

However, the plaintiff argued that the golden colour completely covering the bottle of the mark gives significant value to the goods concerned. If the Court had confirmed this, it would have precluded registration of the mark. Article 7(1)(e)(iii) of Regulation No 207/2009 provides that signs consisting exclusively of the shape which confers substantial value on the product are not to be registered.

European Court confirms trademark protection

However, the CJEU rejected the argument because the colour is not comparable with a feature of the shape of the sign, which the plaintiff relied on (EU:T:2019:297). Therefore, the decisions of the Board of Appeal which do not concern the shape of the sign are not relevant here, the Court of Justice of the European Union (CJEU) held. However, if the applicant had raised another objection, the mirror effect of the surface of the bottle resulting from the polishing of the glass should have been examined, within the meaning of the regulation, as to whether it constituted a particular design element.

The Court also pointed out that the mark in dispute consists of the shape of the packaging of the goods concerned and not of the shape of the goods themselves. Beverages can naturally not be sold in the same condition as they are and therefore require packaging, the court added.

pink shape of bottleIn his second action for annulment, Tombacco put forward a further argument against the 3 D Union trade mark of the shimmering pink bottle shape. The Board of Appeal failed to take account of the fact that the use of paint on bottles of sparkling wine is intended to preserve the organoleptic properties of the contents by acting as a barrier to the oxidation process. Therefore, the combination of the shape of the bottle and its respective colour would aim at achieving a technical effect.

Elements which are assessed as technically and functionally conditional are excluded as a characteristic indicating origin (pursuant to Article 7(1)(e)(ii) of Regulation No 207/2009). In addition, Regulation 2015/2424 introduced the possibility for a trade mark to function on the basis of a characteristic other than the shape of the product. However, that Regulation was not applicable at the time of the facts in question.

CJEU on the shape of the sign

The European Court rejected the plaintiff’s reasoning (EU:T:2019:299). The CJEU pointed out that, in the context of trade mark law, the term “shape” is generally understood to mean a series of lines or contours which define the product concerned in space, so that a colour cannot in itself form a shape without being defined in space. Accordingly, the applicant cannot reasonably rely on the technical effect of the colour, which, moreover, has not been demonstrated.

Finally, Mr Tombacco also referred to the Opinion of Advocate General Szpunar in Louboutin and Christian Louboutin (C-163/16, EU:C:2018:64), that “the combination of colour and shape” is likely to be affected by the prohibition of “shape which confers substantial value on products”.

The CJEU also rejected this argument as inadmissible and in any case as ineffective. As already set out in the reasoning on the ‘essential value’ of the contested mark, the Board of Appeal’s decisions which do not concern the shape of the sign are not relevant here. In addition, the CJEU stressed that, as a court of first instance (CFI), it is not bound by the Opinion of the Advocate General or by his reasoning, any more than the ECJ, which in the Louboutin case had in any case not followed the Opinion of the Advocate General.

The European Court therefore dismissed the action for invalidity and upheld the trade mark registrations of the two bottle shapes coated in colour and with a mirror effect.

Maybe also interesting:

  • Louboutin victorious in the battle over the famous red sole
  • Bottle shape protected as 3D unionmark
  • Sign of a colour combination is no colour mark

 

Would you also like to protect your trademark or brand?

Our lawyers are experienced in trademark and patent law, national and international law.

 

 

 

Sources for text and picture:

Judgement European Court EU:T:2019:299 |  Judgement European Court EuG EU:T:2019:297

  • share  518 
  • share 
  • share 
  • tweet 
  • share 

Category iconTrademark Law Tag iconCJEU,  invalidity proceedings,  European Court,  EU:T:2019:297,  CFI,  EU:T:2019:299,  Louboutin,  3D union trademark,  shape,  liquids,  colour,  shape of the packaging,  Beverages,  bottle shape,  Union trademark,  Form

Reader Interactions

Leave a Reply Cancel reply

Your email address will not be published. Required fields are marked *

Primary Sidebar

More articles about: Trademark Law

All articles

Blog Menu

  • Design Law
  • Healthcare & Lifesciences
  • International Intellectual Property
  • Licenses
  • News from our law firm
  • Overall
  • Patent Law
  • Product- and Trademark piracy
  • Trademark Law

Recent Posts

  • BPatG: Patent claim of cancer drug on active substance as salt 7. March 2022
  • Grant for European IP Protection: SME Fund 2022 4. March 2022
  • CODE-X vs. Cody’s: Likelihood of confusion in drinks? 25. February 2022
  • EOS lip balm no 3D trademark – appeal before ECJ not admissible 24. February 2022

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Das könnte Sie auch interessieren:

4. March 2022
Grant for European IP Protection: SME Fund 2022

Grant for European IP Protection: SME Fund 2022

25. February 2022
CODE-X vs. Cody’s: Likelihood of confusion in drinks?

CODE-X vs. Cody’s: Likelihood of confusion in drinks?

24. February 2022
EOS lip balm no 3D trademark – appeal before ECJ not admissible

EOS lip balm no 3D trademark – appeal before ECJ not admissible

21. February 2022
CFI: Pumpkin seed oil + PGI symbol

CFI: Pumpkin seed oil + PGI symbol

15. February 2022
SPOTIFY v POTIFY – a ‘pot’ app

SPOTIFY v POTIFY – a ‘pot’ app

10. February 2022
CFI: Shoes MADE IN ITALY

CFI: Shoes MADE IN ITALY

Contact us or request a call back

+49 (0) 69 / 606 278 – 0
[email protected]
Request a call back

Footer

Contact

Torhaus Westhafen
Speicherstrasse 59
D – 60327 Frankfurt am Main
Deutschland
+49 (0) 69 / 606 278 – 0
+49 (0) 69 / 606 278 – 199
[email protected]

Office Hours
Moday – Friday:   08:00-18:00

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Law Firm

  • Request non-binding call back
  • Company
  • Our Law Firm
  • ISO Certificate
  • Privacy Policy
  • Data handling for clients
  • Imprint

Follow Us

  • Facebook
  • Twitter
  • LinkedIn
  • xing
  • Email

Newsletter Signup

© Patent- & Rechtsanwaltskanzlei Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

Contact Form

 

Give us a call, send us an email or fill out the contact form.

+49 (0) 69 / 606 278 – 0
[email protected]

Kontaktformular

 

Rufen Sie uns an, schicken Sie uns eine Mail oder füllen Sie das Kontaktformular aus.

+49 (0) 69 / 606 278 – 0
[email protected]