General Court overturns decision of EUIPO Board of Appeal: Glass bottle as three-dimensional trademark has distinctive character

In its judgment of 3 October 2018 (T-313/17), the General Court of the EU ruled that an amphora-shaped receptacle may be registered as a three-dimensional trademark for edible oils and beverages. Average consumers are fully capable of perceiving the shape of the packaging as indication of the product’s origin, provided that that shape in question has sufficient characteristics to attract his attention. Since the assessment of the distinctive character of three-dimensional must not be subject to stricter conditions than those applied to other trademark categories, it is sufficient that the form for which registration is sought to have a minimum degree of distinctiveness for the ground for refusal not to apply.

On 7 December 2015, the applicant, Wajos LLC, applied to the EUIPO for registration of the following three-dimensional shape as a Union trademark for various types of edible oils and beverages in nice classes 29, 30, 32 and 33:

Both the EUIPO and its Board of Appeal (R 1526/2016-1) refused the desired trademark registration alleging lack of distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009. In particular, they took the position that the trademark applied for constitutes a usual form of packaging for the goods to which the trademark was applied. Thus, the form does not allow the average consumer to distinguish the applicant’s goods from those of other undertakings. The trademark would be perceived by the relevant public as a variation of an ordinary bottle-shaped receptacle. The only difference from ordinary bottle shapes lies in the bulbous central part (bead), which is more pronounced than usual. However, the Board of Appeal argued that that bead was technical and functional and therefore excluded it as a characteristic identifying the product’s origin.

This position was rejected by the General Court. The Court pointed out, that competitors in the food sector are confronted with technical constraints in terms of the packaging and labelling of their goods. Thus, there is a considerable incentive for businesses to distinguish their products from those of their competitors, in particular by the appearance and design of their packaging, in order to attract the attention of consumers. In addition, the court highlighted that that the average consumer is fully capable of perceiving the shape of the packaging as indication of the product’s origin, provided that that shape has sufficient characteristics to attract his attention. Although, with regard to three-dimensional marks, the principle applies that the more the three dimensional trade mark for which registration is sought approaches the customary shape of the products in question, the less its character will be distinctive. Only a trademark which departs significantly from the customary practice and is therefore capable of fulfilling its essential function of identifying the product’s origin is distinctive. In that regard, the General Court points out that EU Law does not distinguish between different categories of trademarks. Therefore, the assessment of the distinctive character of three-dimensional marks consisting of the shape of the product itself or of the shape of its packaging must not be subject to stricter conditions than those applied to other trademark categories. It is sufficient to have a minimum degree of distinctiveness for the ground for refusal not to apply.

In the present case, the General Court affirmed this minimum degree of distinctiveness, due to the abovementioned bead, which separates the more massive upper part from the narrower lower part. The Court stated that this feature is indeed a technical and functional characteristic, but, nevertheless, also confers an aesthetic value on the trademark applied for. Even if the average consumer does not generally attach any importance to the shape or packaging of food and does not suspect any indication of origin behind that shape, consumers are with regard to oils and beverages not accustomed to receptacles which have a curved shape in the middle. Accordingly, the shape at issue is not entirely ordinary and is easily memorised by the relevant public. Therefore, the General Court concluded that the three-dimensional trademark, taken as a whole, is distinctive with respect to the goods for which registration was sought, in so far as those elements give the mark a particular appearance for those goods.

Subsequently, the decision of the EUIPO Board of Appeal was revoked.

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