Several 3D trade marks in the shape of a champagne bottle faced the question of likelihood of confusion before the CFI. Even non-distinctive elements of similarity must be taken into account for the assessment of likelihood of confusion, the European Court ruled.
Shape of a champagne bottle: often protected as 3D mark
In 2017, Munich Accessories GmbH (Germany) had applied for a total of three different champagne bottles, each as a 3D Unionmark, under the name “JC JEAN CALL Champagne”. The applicant, Ace of Spades Holdings LLC (USA), filed an opposition against all three 3D marks and claimed a likelihood of confusion with three of its own 3D marks in the shape of a champagne bottle, in the colors gold, black and pink and black.
Each of these three trademark applications of Munich Accessoires was the subject of the action before the CFI, and all three cases were decided with the identical judgment. We therefore summarize all three lawsuits in this article (EU:T:2020:593, EU:T:2020:594, EU:T:2020:595).
Decision contested: clearly dissimilar 3D marks
The Board of Appeal, like the Board of Appeal, had rejected the opposition of the applicant Ace of Spades Holdings. According to the applicant, the contested three marks are clearly dissimilar to the applicant’s earlier marks.
Similarities and differences of the 3D marks
The elements considered to be non-distinctive which the marks at issue had in common were the colors of the bottles and the following shape elements: the downwardly widening bottle shape without shoulders, the cork covered with a black film, the label with a figurative element at the level of the neck of the bottle and the silver film covering the entire bottle. According to the applicant, the non-distinctive similarities have a low impact; nevertheless, the Board of Appeal did not consider those elements to be negligible.
The decision, however, mainly explained the differences. The marks in dispute differ in a number of elements, namely the shape of the bottle, which is visibly more compact in the earlier mark, the intermediate part between the body of the bottle and the cap, and the highly decorated label of the mark applied for. Therefore, the Board of Appeal held that the marks at issue were clearly dissimilar and that there was no likelihood of confusion.
Non-distinctive elements must be taken into account
The plaintiff challenged this decision before the European Court of Justice (EuG) – and was now successful.
The CFI ruled that the Board of Appeal had made an error of assessment in deciding that non-distinctive elements common to the marks in dispute had no influence on the overall impression. Even if elements are non-distinctive, it is still points of similarity that must be taken into account. This is true even if they would have only a very small influence on the overall impression. The CFI therefore decided that the Board of Appeal should have found that the marks in dispute were visually similar overall.
Even slight similarities must be taken into account
The Court of First Instance explained even more precisely how the Board of Appeal should have taken into account the low degree of similarity:
The Board of Appeal could have distinguished between the degree of overall visual similarity of these marks, the CFI held. This could have been done by relating the number of similar elements to the total number of all elements. Furthermore, the Board of Appeal should have taken into account whether the combination of these elements was more or less unusual.
Partially annulled the contested decision
The contested decision must therefore be annulled, albeit in all three actions concerning the three trade mark applications for the shape of a champagne bottle, in so far as the Board of Appeal rejected the opposition on the basis of Article 8(1)(b) of Regulation No 207/2009, the CFI held.
This does not mean, however, that this judgement confirmed the likelihood of confusion in principle by the CFI. Instead, the Court emphasized that a global assessment of the likelihood of confusion was not even carried out by the Board of Appeal, since it erroneously found that the signs at issue were not similar.
The ruling provides interesting aspects for all those who wish to challenge a decision of the Boards of Appeal or are confronted with such a challenge. However, in the actual decision on the likelihood of confusion, unfortunately, no judgment could be pronounced, and rightly so.
Nevertheless, the CFI has given a classification precisely with regard to the strikingly designed label of the challenged 3D marks ‘ Champagne bottle ‘: the figurative element, which consists of a label and an interconnected pattern of ornaments in the form of a leaf-like element, is to be assessed as predominantly decorative, and by no means unusual, the CFI explained. The same applies to the similar element appearing on the label at the neck of the bottle.
This fits in with the recent decision of the CFI on a bottle shape with a label: hardly any distinctiveness can be achieved by the label.
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Three Judgements of CFI ‘ Champagne bottle ‘; EU:T:2020:593, EU:T:2020:594, EU:T:2020:595
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