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
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.
In 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.
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