Finally, Voss has lost its bottle (trade mark) says CJEU

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 [2015] All ER (D) 52 (May)

What is the background to this dispute?

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):

Voss

Devoid of distinctive character?

Some four years later Nordic Spirt AB commenced invalidity proceedings, principally based on Regulation (EC) 40/94, art 7(1). The thrust of Nordic’s arguments were that the mark was 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.

On what grounds did Voss appeal to the CJEU?

Voss put forward six grounds of appeal which are listed below together with a brief summary of the CJEU’s response.

Voss claimed that the General Court failed to consider its argument that OHIM placed the burden of providing the distinctive character of the mark upon Voss even though the mark was registered and therefore enjoyed a presumption of validity. The CJEU rejected this ground as unfounded on the basis that OHIM’s Board of Appeal carried out its own independent analysis of the distinctive character of the mark and did not require Voss to prove anything.

The second ground also concerned the alleged burden placed on Voss to prove the distinctive character of the mark but this time with regard to the way in which the burden was shifted from Nordic (who bought invalidity proceedings and filed no evidence) to Voss. The CJEU also considered this ground unfounded—the General Court undertook a thorough analysis of the components of the mark and found that, when the mark was taken as a whole, its sum was no greater than its parts and the overall mark was non-distinctive.

The third ground concerned the General Court’s conclusion of the mark’s non-distinctive character without first defining the ‘norms and customs’ of the relevant (beverage) sector. The CJEU confirmed the General Court’s approach stating that only a mark which departs significantly from the norm or customs of the sector is not devoid of distinctive character citing Mag Instrument Inc v Office for Harmonisation in the Internal Market (Trade Mark and Designs): C-136/02 P [2004] All ER (D) 75 (Oct)

In its fourth ground of appeal, Voss asserted that while individual components of the mark were assessed for distinctive character, the General Court failed to assess the mark as a whole. The CJEU found that the General Court had assessed the overall impression created by the mark and found that it did not amount to any more than the sum of its non-distinctive components. The plea was rejected as unfounded

The fifth ground of appeal alleged that the General Court distorted the evidence by comparing the mark (a 3D cylinder) with a 2D drawing of a circular section. This meant that the General Court compared a 3D sign to a 2D feature that most bottles have. The CJEU deemed this plea to be based on a misreading of the General Court’s judgment and denied that the comparison was carried out in this way.

In its final ground of appeal, Voss alleged that the General Court’s reasoning in this case (non-distinctive components mean an overall non-distinctive mark) has the effect of making it impossible for the packaging of a product to be accorded distinctive character which is contrary to the purpose of Regulation (EC) 207/2009. Unsurprisingly the CJEU rejected this plea as unfounded based on its earlier conclusion that the General Court had in fact considered the mark as a whole.

Is this ruling bad news for those seeking to register 3D trade marks consisting of the shape of a product?

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?

What does this ruling mean for the future of 3D marks in the EU?

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:

results from the nature of the goods themselves
adds substantial value to the goods, or
is necessary to obtain a technical result

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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