http://ipkitten.blogspot.com/2022/07/euipo-fifth-board-of-appeal-considers.html
Three-dimensional marks are notoriously difficult to register. Concern is often expressed that design rights that are limited in time may be unduly extended in perpetuity through trade mark registrations and thus extended to create a monopoly for a particular shape. All this said whether or not a three-dimensional shape may be registered as an EU trade mark (EUTM) does not depend on the applicant’s intention in seeking registration (unless we are dealing with bad faith), but rather comes down to inter alia whether the mark in question can sufficiently depart from the other shapes available on the relevant market.
All this was recently tackled by the EUIPO Fifth Board of Appeal (the board) in a decision concerning an application for trade mark registration of a three-dimensional shape of a bottle for alcoholic beverages, in particular vodka. The board reasoned that, despite the consideration that a single colour in itself is not distinctive, the colour scheme in the shape mark, due to its size and predominance, was eye-catching and striking. Accordingly, the applicant’s mark was not devoid of any distinctive character, pursuant to Article 7(1)(b) of Regulation (EU) 2017/1001 (EUTMR).
Background
In 2019, The Absolut Company Aktiebolag (the applicant), applied to register the following 3D mark as an EUTM:
Registration was sought for goods in Class 33 (alcoholic beverages, namely vodka) of the Nice Classification.
In 2021, the EUIPO Examiner refused the application on the basis that the relevant consumers would not perceive the sign as being an indicator of commercial origin, as it is instead required under Article 7(1)(b) of the EUTMR. In particular, the elements that appeared on the sign were not outstanding or eye-catching as to create an overall impression which would significantly depart from the customs and norm on the corresponding market.
The applicant appealed the decision and submitted that the mark did not incur the application of Article 7(1)(b) of the EUTMR since consumers were able to repeat, or avoid, the experience of purchasing the goods covered (or, be more precise!, included in) by such sign. Absolut submitted that its mark was highly distinctive given the combination of various fanciful features that, when viewed and judged together, were more than the mere sum of individual constituent parts. Such elements included the:
a) Highly unusual bottle closure alongside the separated foil, each having the unusual colour ‘copper’ standing out in the relevant market environment:
b) Eye-catching frames, consisting of vertical and horizontal lines covering most of the back of the bottle shining through the bottle’s glass:
c) Innovative and exceptional maze-like surface structure applied to the bottle’s sides which is nowhere to be seen on the entire market and helps to make the vodka packaging easily recognisable:
d) ‘Optical effect’ created by the copper-coloured back relief shining through and being perceived also from the front of the bottle:
e) Unusual ‘square shape’ of the bottom of the bottle departing from the norms and customs in the relevant trade (bottles in the sector of vodka are generally ‘cylindrical’ or ‘oval’ and do not contain a square-shaped bottom) and with a ‘look-through’ optical effect created by the ‘copper’- coloured cap ‘shining through’ the bottle:
The board’s decision
The board first considered that the relevant public comprised would be that of the EU and possess an attentiveness ranging from low to average.
Distinctiveness of the applicant’s mark
When a mark consists of the three-dimensional shape of the packaging of the goods in question, those goods – because of their very nature – must be packaged in order to be marketed, so that the packaging chosen imposes its shape on the goods. Therefore, according to the board, for the purposes of examining an application for registration of such a mark, the relevant norm or customs may be those which apply in the sector of the packaging of goods, which are of the same type and intended for the same consumers as those goods in respect of which registration is sought.
a) Closure of the bottle in the colour ‘copper’
The board considered the closure to be normal with no function other than to close the bottle. Furthermore, contrary to being in ‘copper’, the representation comprised of different shades or nuances ranging from copper to brown and/or gold.
b) Rectangular body structure and further features (short neck, conical bottle shoulder, structure, and proportions)
Having regard to the neighbouring sector of the market for whisky and gin, rectangular bottle shapes were also very common. Therefore, the present rectangular shape was merely a slight variant of those shapes present on the market.
c) Crystal-like structure of surface design
The fact being that several producers of vodka use a mazed structure on the glass of the bottles showed that the present mark was not new, original, astonishing or outstanding. The surface design was also very complex and fanciful, with this being attributable to the ornamental and decorative nature of the design’s finish, rather than being such as to indicate the trade origin of the goods. Furthermore, the design was not capable of being easily and instantly recalled by the target market as a distinctive sign.
d) The design of the back of the bottle being entirely ‘copper’ colour
The two rectangular shapes that extend from the shoulder of the bottle until its bottom part occupied almost the entire back part of the bottle. Those rectangular shapes were visible from all sides and would not go unnoticed by consumers.
e) Front label consisting of a prominent frame in the unusual ‘copper’ colour
The front label was in white colour and showed different shades or nuances ranging from copper to brown or gold with some ornamental patterns.
f) The copper-coloured neck foil (neck wrapper)
The wrapper that appeared on the neck of the bottle also showed different shades or nuances ranging from copper to brown or gold.
Overall assessment
The board considered that the first three elements – (a) to (c) – did not depart significantly from the available forms and customs on the market; however, elements (d) to (f) would not go unnoticed by consumers. Those elements have a strong impact on the perception of the whole shape of the bottle. As a result, consumers would be in a position to recall especially the design of the back of the bottle.
In the board’s view, the colour scheme would not be perceived as a purely aesthetic ‘decoration’ of the claimed goods: instead, due to its size and predominance, it would be eye-catching and striking. Despite the consideration that a single colour in itself is not distinctive, the fact that shades or nuances ranging from copper to brown or gold that covered a significant part of the shape of the bottle, precluded a finding of non-distinctiveness.
Therefore, the shape of the bottle departed sufficiently from those available on the relevant market with the consequence that the sign applied would not incur in the application of Article 7(1)(b) EUTMR.
Comment
The decision confirms the test that, as regards to the assessment of distinctiveness of shape marks, only a mark which departs significantly from the norm or customs of the sector concerned fulfils its essential function of indicating origin. However, such a test is not always the relevant one for other types of non-conventional marks. For instance, in Ardagh Metal Beverage Holdings GmbH & Co KG v European Union Intellectual Property Office (EUIPO) (T-668/19), EU: T:2021:420, the EU General Court considered that, the assessment of the distinctiveness of sound marks has to be made as to the ‘resonance’ of the mark and is not subject to a ‘significant departure of the norm’ test developed for, eg, shape marks.
In the present case, the fact that shades or nuances ranging from copper to brown or gold that covered a significant part of the shape of the bottle was sufficient to preclude a finding of non-distinctiveness. In this sense, the decision suggests that potential trade marks that consist of shape marks should comprise more than one colour so that they would more easily be considered eye-catching and striking, and not too complex, in order to be remembered by consumers. Importantly, the shape should depart sufficiently from those available on the relevant market in order to avoid the application of Article 7(1)(b) EUTMR.
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