Alicante Abstracts

Of Sausages, Sauces & Sweets: Further Developments in the Law on Shape Mark

The law on product and packaging shapes as trade marks is taking a clearer form following three recent decisions by the Court of First Instance and the ECJ on sauce bottles, sausages and sweets. What seems to be emerging is a registration system somewhat hardened against product and packaging shape marks, in which it is difficult for brand owners to protect even unusual product or packaging shapes. Some useful lessons may be drawn, however, from a review of the decisions.

 

Sauce Runs Out

In the first case, Develey Holding GmbH & Co. Beteiligungs KG (Case T-129/04), the CFI upheld OHIM’s refusal to register a CTM application for the three-dimensional shape of a squat squeeze bottle with stretched neck, flattened body, sloping sides and lateral ridges, in respect of food and drink in Classes 29, 30 and 31, on grounds of lack of distinctiveness.

In so finding, the CFI held that OHIM’s Board of Appeal was not obliged to give examples to support a view that a shape is devoid of distinctiveness if that view is based on common practical experience of ordinary consumer goods and the way in which they are marketed. In this case, the CFI upheld the BoA’s finding that the bottle would be perceived by the average consumer as a mere ordinary bottle containing drinks, condiments or liquids. The CFI ruled that the applicant was in a better position to show that the BoA’s view was wrong through “specific and substantiated information” that the mark had intrinsic or acquired distinctiveness.

The CFI returned to the oft-repeated dicta that consumers are not in the habit of identifying goods based on product or packaging shape, and will normally look to word or graphic marks instead. As those marks are normally used in conjunction with product and packaging shapes, the assumption is that the word and graphic elements, rather than the shape, carry out the origin-indicating function. In such circumstances, the mere fact that a shape may be different from others on the market is not enough to tip the scales in favour of distinctiveness without evidence that the shape is in fact perceived as distinctive in use.

The lateral curves on Develey’s bottle were regarded as unusual, but “alone…not sufficient to influence the overall impression…to such an extent that it departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin.”

Although neither individuality nor originality were required, their presence could, in the CFI’s view, confer distinctiveness. In its opinion, Develey’s bottle had neither.

 

No Guts, No Glory

Undeterred by discouraging judicial pronouncements on shape marks, Wim de Waele applied to register the shape of a twisted sausage casing as a CTM in February 2003. He claimed protection for sausage gut, meat, fruits, vegetables and dairy products, confectionery and sauces in Classes 18, 29 and 30 (Case T-15/05).

The CFI upheld OHIM’s refusal to register the shape for all goods except milk and cheese products on grounds of lack of distinctiveness. The CFI considered only registrability for sausage gut, as the applicant did not contest the remainder of the BoA’s decision.

The shape in question depicted a sealed twisted segment of sausage casing. The CFI agreed with OHIM that the relevant consumers were not only butchers who filled the sausage casings, but also the end users who bought the filled sausages. In common with all product packaging, sausage casings were seen by both the trade customer and the end purchaser, and the perspective of both was therefore relevant.

Both types of consumer, the CFI held, were unaccustomed to regarding packaging shapes as indicators of origin in the absence of some supporting word or graphic elements. Hence, the shape of the product was to be regarded as distinctive “only if it may be perceived right away as an indication of origin of the goods concerned. However, for that to be the case, the mark must depart significantly from the norm or customs of the sector.”

In this case, the CFI agreed with the BoA that the shape did not so depart. The BoA had identified a number of other items of charcuterie, such as farm sausages, stuffed roast beef, and rolled turkey or chicken escallopes that it thought could have a similar appearance, and the applicant’s shape was not sufficiently different to enable it to be perceived unambiguously as a trade mark.

 

Bittersweet Ending for Werther’s

In June, the ECJ handed down judgment at last on the registrability of the Werther’s Original butterscotch sweet shape and packaging. The background to August Storck KG v OHIM (Cases C-24/05 and C-25/05) was summarized in detail in the Spring 2005 issue of Make Your Mark.

Not entirely unexpectedly, the ECJ dismissed Werther’s appeal against the rejection of its CTM applications for the shape of the sweet and its twist-ended packaging. The ECJ held that the CFI had been right to consider its own practical experience of the shapes and colours of commonly sold sweets in assessing whether the Werther’s sweet departed significantly from the norm or customs of the sector, and was thus capable of acting as an indicator of origin.

The ECJ acknowledged that, following the ruling in Case C-353/03 Nestlé, a mark may acquire distinctive character through use in conjunction with another mark. Hence, the mere fact that the Werther’s sweet had been used in conjunction with the WERTHER’S ORIGINAL word mark was not fatal to the applicant’s efforts to prove acquired distinctiveness. However, the ECJ considered that it was harder to prove acquired distinctiveness in respect of shapes, which the public was less accustomed to perceiving as trade marks, especially where the shape was obscured by packaging at the point of purchase.

The mere fact that the packaging showed a two-dimensional image of a pile of the unwrapped sweets did not assist Werther’s, since the image was not used as a trade mark, but rather as a depiction of what was inside the pack in a form which did not show all the features of the mark applied for.

 

Comment

These recent decisions highlight the extreme difficulty of registering product and packaging shapes as trade marks in the European Union.

The challenges facing such applications are no less steep when applicants can show many years of extensive use, since that use is, in most cases, likely to be accompanied by word or graphic marks. Registration authorities may seize upon those as evidence that mere long-standing use and commercial success do not prove, in themselves, that the average consumer recognizes the shape per se as an indicator of origin.

In the Spring 2005 edition of Make Your Mark, we set out general advice for brand owners seeking to overcome these hurdles. That advice remains unchanged: brand owners should seek to promote shapes separately from word or graphic marks, make them visible at the point of purchase, keep records of market share, consider survey evidence at the early stages of applications, and squash competitor-copying swiftly. Registered design protection may help with this last point, and the relative low cost of this form of protection makes it worth considering as an adjunct, or alternative, to trade mark protection for all commercially important new shapes that may qualify.

In the light of these judgments, however, it is clear that adopting a shape that departs significantly from what competitors are already using is the first step to obtaining trade mark rights in product or packaging shape. What “departs significantly” is open to argument, but starting from a shape which is notably different at first glance may give an applicant an all-important edge when seeking trade mark protection.

Even adopting a notably unusual product or packaging shape may not be enough to secure protection in a system that does not grant such rights readily. However, in conjunction with the steps outlined above, it may offer the best chance of success.