In a recent judgment, the General Court of the EU reversed a prior decision disallowing a 3D EU trade mark registration for a confectionary product represented by the shape of a baby’s bottle. In holding that the trade mark could not be deemed to have a weak distinctive character merely because it consists of a commonly shaped baby’s bottle, the judgment will alert brand owners to the possibility of securing trade mark protection for shape marks which are distinctive in relation to the specific goods or services in respect of which they are used.
On 12 December 2018, a third party filed an application with the EUIPO for revocation of the following 3D trade mark owned by The Bazooka Companies Inc, formerly The Topps Companies.
The third party requested cancellation of the above mark in relation to the following goods in Class 30: ‘Confectionery; sugar confectionery; candy; sweets; sherbet.’ On 21 May 2020, the EUIPO Cancellation Division granted the revocation application and an appeal by the Topps Companies was later rejected by the EUIPO Board of Appeal.
Board of Appeal Decision
In dismissing the appeal, and amongst other comments, the EUIPO Board of Appeal held that:
- The distinctive character of the trade mark, which consists of a commonly shaped baby’s bottle, is weak and would therefore be easily altered
- The forms of the mark produced in evidence differed from the form protected by the registration i.e. there were significant variations in nature, length and position. Therefore, the use as demonstrated was not the use of the mark as registered, nor use in a form differing in elements which did not alter its distinctive character, and
- The registration had been merged with the additional figurative and word elements to create a different mark altogether
The General Court disagreed with the Board of Appeal. On the issue of the identity between the shape of the product and the shape of the registration, the Court stated that both representations consist of the shape of a baby’s bottle, with a teat, a serrated surface and a lid. In its arguments, the EUIPO had contended that the lid is transparent in the product used, which unlike the registration makes it impossible to see the teat and the entire serrated pattern of the collar. Further, the EUIPO also argued that the lid is less slender in the registered mark and occupies a slightly greater proportion than on the representations of the product as used, set out below.
The General Court was satisfied however, that it is practically impossible that the relevant public, consisting of the public at large with an average level of attention, would recognise these differences. In the Court’s opinion, the differences are difficult to recognise with the naked eye. On the whole, the Court was satisfied that the form of the mark as used, i.e. the 3D shape, is recognised as identical to the form of the trade mark registration.
Secondly, in relation to the Board of Appeal’s finding that the distinctive character of the mark is weak because it consists of a commonly shaped baby’s bottle, the Court held that this did not take account of the type of goods in respect of which the mark is registered. For example, the registration protects confectionery goods, sugar confectionery, candy and sherbet, all of which are unrelated to goods used for feeding milk to babies. Therefore, the Court was satisfied that the mark did not have a weak distinctive character solely because it consists of a commonly shaped baby’s bottle. Rather, the mark must be held to have average inherent distinctive character.
Lastly, the General Court concluded that the addition of the mark ‘BIG BABY POP!’ and the few other figurative and word elements appearing on the surface of the trade mark as used does not alter the form of the mark. Ultimately, consumers can still distinguish the form of the 3D mark, which remains identical in the eyes of consumers. Moreover, the Court considered the fact that in the confectionery sector, the combination of a 3D form with additional words or figurative elements is common. The Court held that it would be inconceivable from a commercial and regulatory point of view to sell the confectionery goods at issue using only the form of the mark as registered without any label. According to the General Court, the Board of Appeal was therefore incorrect in finding that the trade mark had merged with additional figurative and word elements to form a different sign.
This decision undoubtedly represents a win for The Bazooka Companies Inc as their 3D EUTM shape mark registration will now remain in place. It remains to be seen whether the decision is appealed to Europe’s highest Court, the CJEU, by either the EUIPO or by the third party which filed the initial cancellation application.
Interestingly, the General Court emphasised in the judgment that when assessing the distinctive character of 3D marks which consist of the shape or appearance of the product itself, the criteria to be taken into account are no different from those applicable to other categories of trade mark. Brand owners should therefore be aware that when considering whether to apply for trade mark protection for their product shapes or packaging, all relevant factors should be considered including:
- The market share held by the mark
- How intense, geographically widespread and long-standing use of the mark has been
- The amount invested by the undertaking in promoting the mark
- The proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking, as well as
- Statements from chambers of commerce and industry or other trade and professional associations
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