Research and Production Company MELT had requested in 2013 a consistent three-dimensional mark for the shape of a bottle, for goods in Class 32 (Application for a Community trade mark nr. 010 751 584).
MeltWater UAB, not satisfied with the resolution 481 / 2013-5 of the Fifth Board of Appeal of the Office for Harmonization in the Internal Market (OHIM) of 26 November 2013, which confirmed the examiner's decision to refuse registration of the three dimensional trademark, requested in January 27, 2014, before the General Court, on one hand, the annulment of the decision of the Chamber of Appeal of OHIM (R 481 / 2013-5), and on the other hand, to order OHIM to register as a Community trademark consisting on the shape of a bottle.
The OHIM had refused the registration of the three-dimensional trademark invoking Articles 4 and 7, paragraph 1, letter b) of Regulation (EC) No 207/2009, together with the case law of the European Union which refuse the registration of signs which are not capable of distinguishing the goods or services of one company from those of other companies, since found that the shape of the trademark applied coincides with the common aspect of a bottle (they had a cylindrical shape with a constriction at the top).
The Court confirmed that the non-registrability of the three-dimensional trademark in question as a Community trademark highlighting:
1. Non distinctiveness of the sign: reaffirming the doctrine of the Court according to which the distinctive character of a three-dimensional mark must be assessed using the same criteria applicable to other categories of mark but the perception of the average consumer is not necessarily the same in the case a three-dimensional mark (consisting of the appearance of the product itself), as in the case of a word or figurative mark (consisting of a sign unrelated to the appearance of the products it denotes) – Freixenet Case / OHIM EU: C: 2011: 680-. The Court argued that most bottles sold in the market have a cylindrical shape with a narrowing at the top, and narrowing of a bottle neck it is more than a variant of the classic shape of a bottle.
2. The irrelevance to be a result of an artistic and creative activity for assessing the distinctiveness of a mark, in accordance with paragraph 1 b) Article 7 of Regulation N. 207/2009.
The judgment which ends the issue is important because it clarifies on distinctiveness of signs three-dimensional marks.
Written by : Magali Contardi