Do 3D shape marks have a future in the European trade mark system?

The first 3D cat

Given the popularity of 3D comics to 3D movies and printers today, consumers have marvelled at the possibility to see and create images beyond their 2D representation. By contrast, in the trade mark world in the European Union, the Court of Justice has been following the regressive trend of refusing protection for 3D trade marks.

At the application level, OHIM examiners are the first to raise an array of absolute grounds listed at Article 7(1) CTMR. These refusals are usually confirmed by the Board of Appeal and the EU Courts -- on the basis that the applied-for marks consisting of the shape of product cannot be registered because they are necessary to obtain a technical result, for example see the Lego brick; consist of shape which gives substantial value to the goods as for Bang & Olufsen, or the all-time favourite ground for refusal -- the shape mark lacks distinctive character , as was the case for chocolate confectioneries.

In its impetus to reject any attempt to protect packaging with Community trade mark rights, the Court of Justice momentarily slowed down and censured the General Court’s findings in the Freixenet Cava bottle cases, which ultimately impeded registration of any mark consisting of the packaging of the goods itself. According to the General Court, the decisive element revealing the origin of the goods to consumers was the label attached to the bottle rather than the form of the bottle or its appearance.The CJEU annulled the GC’s judgment and held that

Such an assessment means that marks consisting of the appearance of the packaging of the product itself that do not contain an inscription or a word element would be excluded automatically from the protection that may be conferred by the CTMR. 

In addition, even if bottles are never sold without labels or any other kind of marking- indeed beverages always require a label to be affixed for consumer protection obligations- this does not mean the consumer cannot identify two marks consisting of the bottle shape and the word mark (think Coca-Cola!)

Does the Voss
bottle diverge

 significantly ...

By 2015 – two years being currently the approximate gestation time for a EU Judgment -- the Court of Justice will have to decide on whether it disagrees with the GC which found that the registered trade mark representing the packaging of the Voss bottle was not distinctive for goods in Classes 32 and 33 (See GC Judgment T-178/11). In that case, Voss had registered the shape mark represented here in 2004 but was the object of an invalidity action in 2008 by a competitor Nordic Spirit AB. By decision of 10 March 2010, the Cancellation Division had rejected the application for a declaration of invalidity in its entirety. It indicated that its three members ‘were not aware of the market presence in the Community of bottles used for selling beverages shaped like [the contested trade mark] in May 2003’ (date of application of the trade mark) and that they were instead familiar with bottles having a curved shape, either in the middle or the upper part. It concluded that the shape of the contested trade mark was not ‘common’ on the beverages market and that, because of the contrast between the transparent body and the cap, it departed significantly from existing bottles and could, for that reason, function as a trade mark. By decision of 12 January 2011 (Case R 785/2010-1), the First Board of Appeal (BoA) of OHIM annulled the Cancellation Division’s decision and claimed that it would be increasingly clear that the distinctive character of a mark exclusively consisting of the design of a product or its packaging should not be assessed in the abstract, but with reference to prevailing branding practices in the relevant market, which consist of including a label or wording on the container. The BoA alleged that producers invariably add labels because ‘producers are unsure whether shapes per se can have a trade mark function’. This reasoning was held to be clearly illegal by the CJEU in its Freixenet judgments. However, the GC in its Judgment, cleverly avoided to look at this part of the reasoning claiming that it was sufficient to examine whether the shape departed significantly from the norms and customs of the sector-- the second prong for the validity of a 3D marks in the EU.

...from the norms and customs of the sector?

To this Kat’s surprise, the General Court considered that the Voss shape did not diverge significantly from the norms of the sector – i.e.: the characteristics claimed by Voss (cap, absence of neck, height/with ration) but only amounted to a variant of the existing shapes since bottles come in all sorts of shapes and sizes. Moreover, according to the evidence in the file-- consisting of one other bottle -- the shape has already appeared on the market in the past though it was later abandoned. The fact that the bottle was abandoned many years ago did not support the argument that it is distinctive but merely confirms that variants of the same basic cylindrical bottle do appear now and then, in accordance with changing tastes, fashions and trends.

The Preamble of the EU trade mark Directive proposal expressly mentions the necessary link between “trade mark protection and innovation”. However, without any trade mark rights to enforce against competitors, the producer of a distinctive 3D form cannot prevent competitors from using that shape, thereby rendering any promotional/marketing efforts by the owner of the unique product shape to distinguish their 3D form ineffective, diluting the chances that consumers will ultimately recognize that form as a designation of origin, and overall dissuading innovative companies from investing and protecting their original packaging under EU law.

Or the Court should at least clarify the test of the norms and customs of the sector-which may be too subjective today -- to qualify as a legal test to allow registration of 3D rights.

3D cat gifs here and Puss in Boots in Blu-Ray 3D
My life as 3D blog. No special glasses required