Shape mark of bottle with cylindrical section has no distinctive character

09-05-2015 Print this page
IPPT20150507, CJEU, Voss of Norway v OHIM

TRADEMARK LAW

 

EGC itself examined whether there was any concrete evidence and did not impose the burden of proving the existence of such evidence on the appellant

 

"70 The General Court thus itself examined whether there was any concrete evidence which would indicate that the composite mark, taken as a whole, is greater than the sum of its parts and did not, contrary to what the INTA and the appellant submit, impose the burden of proving the existence of such evidence on the appellant."


EGC has not failed to describe the norms and customs of the alcoholic and non-alcoholic beverages sector  

 

"82 In the present case, the General Court assessed, in paragraphs 51 to 53 of the judgment under appeal, the distinctive character of the contested trade mark in relation to the norms and customs of the alcoholic and non-alcoholic beverages sector.
83 In paragraph 51 of that judgment, it first of all held, as regards the three-dimensional shape of the contested trade mark, ‘it is well known that the vast majority of bottles available on the market have a cylindrical section’.
84 Next, in paragraph 52 of that judgment, the General Court held, as regards the non-transparent cap, that ‘it is well known that many bottles are closed with a cap made of a different material and colour from the body of the bottle’.
85 Lastly, in paragraph 53 of the judgment under appeal, the General Court held that the diameter of the cap, which is the same as that of the bottle, ‘is a mere variant of the existing shapes [and cannot] be regarded as departing significantly from the norms and customs of the sector, even though it is somewhat original’."


The General Court rightly considered whether the contested mark departs significantly from the norm of customs of the sector.

 

"90 However, for the purpose of applying those criteria, the perception of the average consumer is not necessarily the same in relation to a three-dimensional mark consisting of the appearance of the product itself as it is in relation to a word or figurative mark consisting of a sign which is independent of the appearance of the products it designates. Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element, and it could therefore prove more difficult to establish distinctive character in relation to such a three-dimensional mark than in relation to a word or figurative mark.

91 In those circumstances, the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009. Only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of that provision (judgments in Mag Instrument v OHIM, C‑136/02 P, EU:C:2004:592, paragraph 31, and Chocoladefabriken Lindt & Sprüngli v OHIM, C‑98/11 P, EU:C:2012:307, paragraph 42).

95 It is apparent from the foregoing considerations that the General Court correctly identified and followed the criteria established by the relevant case-law in that regard."


Wrongly stated that EGC when assessing distinctiveness did not examine overall impression

 

"109 It follows that the General Court correctly based its assessment as to whether the contested trade mark has distinctive character on the overall impression which is conveyed by the shape and the arrangement of the components of that mark, as required by the case-law referred to in paragraph 105 of the present judgment."


EGC did not confine its analysis of the three-dimensional sign at issue to a comparison of the shape of that sign with a tw-dimensional feature

 

"118 The General Court thus held that the word ‘section’ used by the Board of Appeal in paragraph 37 of the contested decision must be understood as meaning ‘part’ and according to that Court the vast majority of bottles have a part which is cylindrical.

119 It follows that, contrary to what the appellant claims, the General Court did not confine its analysis of the three-dimensional sign at issue to a omparison of the shape of that sign with a two-dimensional feature."


That the EGC would have considered that trade mark that is made up only of components which are not devoid of distinctive character in relation to the goods concerned generally leads to the conclusion that that trade mark, taken as a whole, is devoid of distinctive character.


"125 It is true that, in the present case, the General Court held, in paragraph 57 of the judgment under appeal, that ‘the fact that a composite trade mark is made up only of components which are devoid of distinctive character in relation to the goods concerned generally leads to the conclusion that that trade mark, taken as a whole, is devoid of distinctive character’.

126 However, it immediately stated that that would not be the case if there were concrete evidence, such as, for example, the way in which the various features are combined, indicating that the composite trade mark, taken as a whole, is greater than the sum of its parts."

 

IPPT20150507, CJEU, Voss of Norway v OHIM