2015/3
ISSN 2037-6677
Mission impossible? Three-dimensional shape trademarks and the requisite distinctiveness for registration in the European common market. The CJEU's Appeal Judgement in Voss of Norway ASA v. OHIM
Flavia Zorzi Giustiniani
Tag: trademarks common, market
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ISSN 2037-6677
DPCE online 2015-3
Mission impossible? Three-dimensional shape trademarks and the requisite distinctiveness for registration in the European common market. The CJEU's Appeal Judgement in Voss of Norway ASA v OHIM. di Flavia Zorzi Giustiniani
1. – In Voss of Norway ASA v OHIM (Case C-445/13P), the Sixth Chamber of the Court of Justice of the European Union (CJEU) has held that the appellant's three-dimensional (3D) trade mark was registered invalidly because it did not possess enough distinctiveness to warrant registered protection. This decision, while confirming the difficulty in assessing the distinctive character of product shapes, highlights some ambiguities and inconsistencies which still feature the EU institutions' approach vis-à-vis three-dimensional trade marks.
2. – In December 2004 Voss of Norway ASA (Voss) obtained a Community trade mark (CTM) registration for a transparent cylindrical bottle with a silver cap of the same diameter as the bottle, covering goods in Classes 32 (Beers; non-alcoholic drinks, water) and 33 (Alcoholic beverages (except beers)) of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957. Some years later, in 2008, Voss was
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the object of an invalidity action by the competitor Nordic Spirit AB, which markets vodka in a similarly shaped bottle. On 10 March 2010 the Cancellation Division of the Office of Harmonization of the Internal Market (OHIM) rejected in its entirety the request for invalidity on the ground that the shape of the contested sign, because of the contrast between the transparent body and the cap, was significantly different from existing bottles in the relevant market at the date of the application of the trade mark. By Decision of 12 January 2011 (Case R 785/2010-1) the First Board of Appeal (BoA) of OHIM annulled the Cancellation Division's ruling, holding the shape mark registration to be invalid for not meeting the requirements of Article 7(1)(b) CTM Regulation No. 207/2009 (CTMR). The BoA considered that the distinctiveness criteria of a mark which is the very appearance of a product or its packaging should be assessed with reference to prevailing branding practices in the relevant market, consisting of bottles or other forms of packaging that are marked with «a label or a verbal or graphic sign». As a consequence of such practice, and as also acknowledged in previous European case-law (T-129/04, Develey v OHIM, 15 March 2006, para. 47), the average consumers first look at the label of the product to identify the origin and to distinguish it from others. Moreover, the Board observed that the shape of the contested bottle did not deviate significantly from that of other beverage containers used within the European Union and is a mere variant thereof, and that accordingly it does not depart significantly from the norms and customs of the sector. Rejecting Voss' argument that the cylindrical shape in question is distinctive, it remarked that according to the evidence in the file the latter had already made its appearance on the market – in a single case - even if it was subsequently abandoned. Voss brought an appeal to the EU General Court seeking annulment of the BoA's decision. While rejecting the appeal, the General Court acknowledged that the first pillar of reasoning of the decision appealed, where the Board held that beverages are almost always sold in bottles displaying a label or a verbal or graphic sign in order to enable consumers to distinguish between the different products, was incorrect (as already affirmed in previous jurisprudence, cf. C-344/10 P & C-345/10 P, Freixenet SA v OHIM, 20 October 2011, paras. 50-52). Nonetheless, such errors www.dpce.it
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did not affect the ruling's operative part, whose reasoning was not vitiated by any error. In this regard the General Court agreed, inter alia, with the BoA that despite the particular characteristics of the bottle at issue – the contrast between the transparent body and the cap, the lack of a narrow neck and the height/width ratio – its shape did not depart significantly from the norms and customs of the relevant sector. Consequently, it confirmed the Board's ruling by arguing that « even if the applicant’s bottle is one of a kind, that does not by itself mean that it departs significantly from the norms and customs of the sector and that it therefore has distinctive character » (T-178/11, Voss of Norway ASA v OHIM, 28 March 2013, para. 72).
3. – On 6 August 2013 Voss has then lodged a final appeal to the CJEU, putting forward six pleas in law. It bears noting that the International Trademark Association (INTA), a non-profit association of more than 6000 undertakings worldwide, was granted leave to intervene in support not just of the appellant’s interests but of all its members with respect to « the assessment of the validity of three-dimensional marks » (cf. Order of the President of the Court, 25 March 2014). Among the six pleas of law raised by Voss, the third and fourth ones concern precisely one of the most crucial issue for CTMs in general, and for threedimensional trademarks in particular: their required distinctive character. According to the Appellant, the General Court had doubly infringed Art. 7 (1) (b) of the CTMR, firstly because it erroneously defined the norms and customs of the sector; and secondly because it erred in law in assessing the distinctive character of the Voss bottle trademark, as it did not consider the bottle's overall impression.
4. – Article 4 of the CTMR establishes that «[a] Community trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings». While for a long time marks have been represented essentially by words, logos or other graphical designs, more recently manufacturers have tried to register also so-called «nonwww.dpce.it
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traditional» trademarks, such as scent marks, sound marks and three-dimensional shape marks, which earlier were not considered eligible for registration (C. Saez, Some See Rise in Non-Traditional Trademarks; National Registries Not Yet, in Intellectual Property Watch, 20 June 2008, http://www.ipwatch.org/weblog/2008/06/20/somesee-rise-in-non-traditional-trademarks-national-registriesnot-yet/; on non traditional three-dimensional marks see generally K. Li, Where is the right balance? Exploring the current regulations on non-traditional three-dimensional trademark registration in the United States, the European Union, Japan and China, in 30 Wisconsin International Law Journal 2, 428-475 (2012)). Non-traditional marks, like traditional ones, are registrable under European Union law provided that they satisfy the requirements established by Article 7 of the CTMR, which lists absolute and relative grounds for refusal of CTM registration. Concerning shapes of products, Article 7 (1) (e) envisages three specific absolute grounds for refusal, precluding registration of «signs which consist exclusively of (i) the shape which results from the nature of the goods themselves; or (ii) the shape of goods which is necessary to obtain a technical result; or (iii) the shape which gives substantial value to the goods». If a sign cannot satisfy these requirements, which relate to the intrinsic qualities of the mark, it will be permanently excluded of protection. The first ground of refusal is applicable when the trade mark applied for consists exclusively of the true-to-life shape of goods (manufactured or existing in nature) (cf. Guidelines for examination in the Office for Harmonization in the Internal Market (trade marks and designs) on Community trade marks. Part B. Examination, Section 4, para. 2.5.2). Its purpose is indeed to ensure that basic shapes are kept available for use by any trader. The second indent instead concerns so-called technical functionality, excluding from trademark protection those shapes whose essential characteristics all perform a technical function (C-48/09 P, Lego Juris A/S v OHIM, 14 September 2010, para. 17). An illustrative example in this respect is offered by the most famous Lego eightstudded building brick, which was refused registration because its shape was deemed necessary to obtain a technical result (ibid.). Finally, the third ground of refusal is concerned with shapes whose aesthetic www.dpce.it
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characteristics constitute one of the principal elements determining the market value of the goods concerned (C-205/13, Hauck GmbH & Co. KG v Stokke A/S, Stokke Nederland BV, Peter Opsvik, Peter Opsvik A/S, 18 September 2014, para. 36). An example of application of aesthetic functionality can be found in the Bang & Olufsen case, where the Court held that the specific design of Bang & Olufsen's loudspeaker increased the appeal of the product and with that its value (T-508/08, Bang & Olufsen v OHIM, 6 October 2011, paras. 73-76), and accordingly refused registration. Conversely, relative grounds of refusal do not preclude a later registration if it can be demonstrated that the trade mark has acquired distinctiveness through use on the market (cf. Art. 7 (3) CTMR). Among the latter ones, particularly challenging for three-dimensional shape marks is the one established by Article 7 (1) (b), which precludes registration of «trade marks which are devoid of any distinctive character». According to established case law, distinctiveness ex Art. 7 (1) (b) CTMR means that the sign serves to identify the product and/or the services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (C-468/01 P & C-472/01 P, Procter & Gamble Company v OHIM, 29 April 2001, para. 32; C-304/06 P, Eurohypo AG v OHIM, 8 May 2008, para. 66; and C-398/08 P, Audi v OHIM, 21 January 2010, para. 33). A mark’s distinctiveness must be assessed by reference first to those goods or services in respect of which registration has been applied for and, second, to the perception of the «relevant public» (C-473/01 P & C-474/01 P, Procter & Gamble v OHIM, 29 April 2004, para. 51; C-304/06 P, Eurohypo AG v OHIM, 8 May 2008, para. 67). A common feature of the distinctiveness requirement and the criteria ex art. 7 (1) (ii) and (iii) is that they cannot be assessed in a objective manner since they require a subjective evaluation of the consumers' perception, making them «a moving target» (as was aptly remarked by A. Kur, Too Pretty to Protect, Trade mark law and the enigma of aesthetic functionality, Max Planck Institute for Intellectual Property and Competition Law Research Paper No. 11-16, 17-18). In principle, the standard for assessing the distinctive character of 3D marks is www.dpce.it
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the same as that applied to other trademarks, as it is routinely repeated by the OHIM, the CJEU and the GC (C-136/02 P, Mag Instrument Inc. v OHIM, 7 October 2004, para. 32; C-456/01 P & C-457/01 P, Henkel KGaA v OHIM, 29 April 2004, para. 38; T-399/02, Eurocermex SA v OHIM, 29 April 2004, para. 22). In practice, though, three-dimensional signs have less than a quarter of chances of being registered in the European common market than figurative marks (see D. Friedmann, The bottle is the message: only the distinctive survive as 3D Community trade marks, in 10 Journal of Intellectual Property Law & Practice 1, 42 (2015)). This is a consequence of the particularly strict approach applied by EU examining authorities towards registration requests of products’ shapes, which points out the continuing distrust towards such signs (on this reality see among others A. Folliard-Monguiral, D. Rogers, The protection of shapes by the Community Trade Mark, in 25 European Intellectual Property Law Review 4, 169-179 (2003) and L. Donnellan, Three Dimensional Trade Marks: the Mars and Lindt cases, 32 European Intellectual Property Law Review 3, 132-137 (2010)). The CJEU has indeed affirmed that the perception of the relevant consumers is not the same in relation to 3D marks as it is in relation to a word or a figurative mark. In its opinion consumers do not usually make assumptions about the origin of products on the basis of their shape or the shape of their packaging, if there is not any graphic or word element on them (C-136/02 P, Mag Instrument Inc. v OHIM, 7 October 2004, para. 30; for a criticism of this assertion see D. Friedmann, The bottle is the message cit., 5, who remarks that «[i]n each category [of marks] there might be big differences in the perception of distinctiveness by consumers»). Three-dimensional signs are thus not devoid of any distinctive character only if they depart significantly from the norms or customs of the sector in question and therefore fulfill their essential function (C173/04 P, Deutsche SISI-Werke GmbH & Co. Betriebs KG v OHIM, 12 January 2006, para. 17).
5. – In the third ground of appeal, Voss has argued that the indications identified by the GC with respect to the norms of the sectors are first of all factually wrong, referring in particular to the assertion that «it is well known that the vast majority of bottles available on the market have a cylindrical section» (cf. Twww.dpce.it
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178/11, Voss of Norway ASA v OHIM, 28 March 2013, para. 51). Moreover, such indications are so vague and general that their application would automatically exclude any bottle from trade mark protection, even the most distinctive ones such as the world famous Coca Cola bottle (cf. 2013/C 344/70, Appeal brought on 6 August 2013 by Voss of Norway ASA against the judgment of the General Court (First Chamber) delivered on 28 May 2013 in Case T-178/11: Voss of Norway ASA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Case C-445/13 P), 23 November 2013; International Trademark Association, Statement of Intervention in Case C-445/13P, 25 April 2014, para. 19). The arguments put forward by the Appellant have been dismissed by the CJEU, which has established that the General Court correctly defined the norms and customs of the beverages sector. Interestingly, the CJEU has not given any weight to the circumstance, correctly stressed by Voss as well as by the third intervener INTA, that the GC had failed to identify concrete examples of the norms of the sector in order to substantiate its assertions. This failure, moreover, is quite remarkable considering that neither the cancellation applicant had provided any such example. In partial reversal of its previous case-law, the CJEU has indeed affirmed for the first time that the analysis of the distinctiveness requirement can be based just on «well-known facts» (cf. C-445/13 P, Voss of Norway ASA v OHIM, 7 May 2015, para. 86).
6. – With the fourth ground of appeal Voss has also claimed another infringement of Art. 7 (1) (b) of the CTMR, alleging that the GC evaluated each component of the contested bottle individually rather than assessing it as a whole. According to settled case-law, as exemplified by the Eurocermex case, the assessment of the distinctiveness of composite signs – like undisputedly is the Voss bottle – has to be made considering their overall appearance, since it cannot be expected from the average consumer to engage in an analysis of a mark's various details (C-286/04 P, Eurocermex v OHIM, 30 June 2005, paras. 22-23 and the caselaw cited therein). Nonetheless, such an assessment is not incompatible with a previous, separate evaluation of the sign's different components (ibid.). Moreover, a composite sign whose elements are individually devoid of any distinctive character, www.dpce.it
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can be distinctive provided that concrete evidence, such as, for example, the way in which the various elements are combined, indicates that the sign is greater than the mere sum of its constituent parts (T-323/00, SAT.1 v OHIM, para. 49). This jurisprudence was also recalled in the first place by the GC, and subsequently by the CJEU to confirm the correctness of the former’s reasoning. The CJEU has indeed argued that, in conformity with the mentioned jurisprudence, the General Court drew the right conclusions asserting that the mark was nothing more than the sum of its elements «and that, consequently, ‘the manner in which the components of the composite trade mark at issue here are combined [is also not] capable of giving it distinctive character » (C-445/13 P, para. 108, emphasis added). The foregoing conclusions, however, are not self-evident. In the Eurocermex case the mark applied for, consisting of a quite ordinary beer bottle characterised by a piece of lemon at the top, was considered not distinctive in all of its parts. On the contrary, in the present case the GC acknowledged that two elements of the contested trademark – the «perfect cylinder» shape of the bottle and the diameter of its cap – are «somewhat original» (cf. T-178/11, paras. 51, 53). It is thus arguable that, in such a circumstance, the overall impression of the composite sign could well be considered as having a distinctive character, since inter alia it had initially been accepted for registration by OHIM. All the more so given the substantial lack of evidence submitted by the cancellation applicant to demonstrate the alleged lack of distinctiveness. Additionally, contrary to what both the GC and the CJEU implied, there is no perfectly matching precedent on which to found the invalidity of the Voss trademark.
7. – EU trademark law explicitly envisions the possibility to register shapes as trademarks. As shown, this is also confirmed by the specific criteria posed by the CTMR to applications for shape marks. On the other hand, a complete exclusion of shapes of products or their packaging would run counter to Article 15 of the TRIPS Agreement, according to which any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings shall be eligible for registration as trade marks. Nonetheless, since their first introduction very few shape marks have been registered in the www.dpce.it
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European common market, where they discount the prejudice of being inherently less distinctive than traditional signs. Additionally, during the last years the rate of registration of shapes has been progressively lower. The case under review is a most recent manifestation of the said regressive trend of refusing protection to three-dimensional marks. In particular, by asserting for the first time that the evaluation of distinctiveness can be based on well known facts instead of being substantiated by concrete examples, the CJEU has significantly widened the discretion of examining authorities. Moreover, the employment of such a reasoning to a mark which had obtained registration could encourage third parties to challenge the validity of any registered mark without producing evidence in support of their allegations. The risk is that, in the future, the outcome of shape marks application proceedings will be increasingly negative or at least unpredictable.
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