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

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):

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

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