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What are the pitfalls of registering 3D marks? In this article, we examine the CJEU's recent ruling in: Voss of Norway ASA v Office for Harmonisation in the Internal Market (Trade Marks and Designs): C-445/13 P  All ER (D) 52 (May)
In 2004, Voss of Norway ASA, a company that sells premium bottled mineral water, registered a 3D Community Trade Mark for the shape of a water bottle as reproduced below (the mark):
Devoid of distinctive character?
In the early days of this dispute Voss was successful. In 2010, the Office for Harmonisation in the Internal Market’s (OHIM) Cancellation Division rejected Nordic’s application for invalidity, finding that the shape of the 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.
However, the subsequent appeals all went against Voss. First, OHIM’s Board of Appeal found that consumers would look at a label on a drink bottle in order to identify the origin of the product and distinguish it from others. Consequently the shape of the bottle, in itself, could not function as a trade mark. In addition, the Board of Appeal did not think that the bottle shape departed significantly from the shape of other drink containers. The General Court confirmed the Board of Appeal’s decision and agreed that the bottle shape was only a variant of existing shapes.
The test for assessing the distinctive character of 3D trade marks consisting of the shape of the product itself is identical to the test for other categories of trade mark (Mag Instrument v OHIM). A shape that is unusual in relation to the goods or services applied for is likely to be considered inherently distinctive. However, this ruling does illustrate that the perception of the ‘average consumer’ is not necessarily the same in relation to a 3D mark comprising the appearance of the product itself as it would be for a word or figurative mark.
The difficulty in registering (or, in this case, maintaining) a 3D product shape mark is that, in the courts’ view, average consumers do not make assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any word or graphic element. Arguably there are exceptions—would the average consumer recognise the distinctive shape of a traditional glass Coca-Cola bottle without the name and logo?
Under the Trade Mark Directive 2008/95, art 3(e) a shape mark may run into trouble if the mark consists exclusively of a shape which:
Consequently IP owners must think long and hard about what they are seeking to protect and if trade mark registration is the appropriate route. As this case illustrates, passing the hurdle of trade mark registration does not necessarily guarantee an unchallenged future. Usually it would be cheaper and easier to obtain registered design protection in respect of product packaging—albeit that, in contrast to a registered trade mark, the rights protected do not run into perpetuity.
Jessica Stretch, solicitor in the Lexis®PSL IP & IT team. This article was republished with kind permission of WIPIT's sister site Lexis®PSL IP & IT . For a free trial, please click here.
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