Distinctive trade marks in Europe

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A decision has been issued by the Court of Justice of the European Union (ECJ) with regard to the standard required for distinctiveness of Community trade marks. The ruling followed a refusal of trade mark applications for frosted bottles on the basis that the marks were devoid of distinctive character, because it was a well known fact that wine was chosen on the basis of the combined word and labelling elements of the product, not because of the look of the bottle itself.

The trade mark applications for the frostedbottles were originally made by Freixenet SA in1996, claiming the colours “golden matt” and“black matt” with the disclaimer that theapplicant “does not want to obtain restrictiveand exclusive protection for the shape of thepackaging, but for the specific appearance of itssurface”. Freixenet had provided specific andsubstantiated evidence supporting its claim as tothe distinctiveness of the marks at the time theywere filed. However, the marks were refused atfirst instance and on appeal, with referencebeing made by the Board of Appeal to its owngeneral and practical experience as reasons why the marks were not distinctive. The EU’s General Court also upheld the decision, stating that sincebottles are not sold without a label, only the word element of the label coulddetermine the origin of the goods and therefore the colour and matt finish ofthe glass bottles could not function as a trade mark.

The matter was then referred to the ECJ, which considered whether the criteria
of inherent distinctiveness for a 3D shape should be greater than for any other
category of trade mark. The ECJ ruled that account must be taken of the fact
that the perception of the average consumer is not necessarily the same in
relation to a 3D mark when compared to a word or figurative mark, because
average consumers were not in the habit of making assumptions about the origin of the product on the basis of a shape or packaging. The decision stated that, in those circumstances, only a 3D mark which differs significantly from the norm or customs of the sector would thereby fulfil the essential functions of a trade mark, namely designating origin. Therefore a 3D mark could be sufficiently distinctive, but must meet this standard of being unconventional.

In this case, the ECJ set aside the earlier judgements to refuse the trade mark
applications because a reasoned justification for the refusal had not been
provided based on an assessment of the trade marks in light of the well
established criteria set down by case law. In particular, the General Court’s
conclusion that the origin of the goods would be determined solely by wording
on the label would mean that a trade mark consisting of the appearance of
packaging of products would automatically be excluded from Community trade
mark protection. This was clearly never the intention of the law in this area.