• DESCRIPTIVE MARKS

    The Law On Trade Dress, Shaping Up

    Over the past year, the ECJ and the Advocate-General have offered valuable guidance on how to assess inherent distinctiveness in three-dimensional trade marks. Their views offer useful insight into how the law on the registrability of form marks is shaping up, and how trademark owners can best shore up their rights in product shapes and packaging.

     

    Shape of Packaging

    In Deutsche SiSi-Werke GmbH & Co. Betriebs KG v. OHIM (Joined Cases T-146/02 to T-153/02), the ECJ considered the registrability of stand-up convex foil drinks packaging. SiSi-Werke had filed 8 CTM applications for this type of three-dimensional shape in respect of fruit drinks and fruit juices. OHIM refused the applications on the ground that the shapes were devoid of distinctive character under Article 7 (1) (b) of the CTM Regulation.

    On appeal, the ECJ observed that marks that fall foul of Article 7 (1) (b) are “those which, from the point of view of the relevant public, are commonly used, in trade, for the presentation of the goods or services concerned or with regard to which there exists, at the very least, concrete evidence justifying the conclusion that they are capable of being used in that manner.” The relevant public for fruit drinks was held to be ordinary consumers.

    As fruit drinks and fruit juices were necessarily packaged for sale, the ECJ held that the packaging was indistinguishable from the appearance of the product itself, and the public would be likely to perceive the sign not as a mark, but “first and foremost” as packaging. It could only possess distinctive character if “it may be perceived immediately as an indication of the commercial origin of the goods or services in question.”

    The ECJ dismissed SiSi-Werke’s criticisms that examples of similar packages found on the Internet and relied on by OHIM in the refusal were irrelevant because they were not from within the E.U. nor from the appropriate time. The examples were “concrete evidence” that packaging of a similar type was currently used elsewhere in the world for drinks packaging. OHIM had been entitled to infer that the packs were not sufficiently unusual that the average consumer would perceive them as indicators of origin in the E.U.

    The minor differences between SiSi-Werke’s packs and those located on the Internet were not enough to render the overall appearance markedly different. The level of attention of the average purchaser of fruit drinks was low and small differences in shape or contour would not normally be perceived. The high cost of production and technical difficulties involved in producing the packs did not confer distinctiveness on a shape which otherwise did not possess it.

     

    Shape of the Product

    In Mag Instrument Inc. v. OHIM (Case C-136-02 P), Advocate-General Colomer considered appeals arising from OHIM’s refusal under Article 7 (1) (b) to register five Community Trade Mark applications for the shape of flashlights in respect of flashlights, parts and accessories.

    The Advocate-General rejected Mag Instrument’s argument that, in line with the Advocate-General’s opinion in Baby-Dry, any perceptible difference between a shape applied for and other shapes on the market is sufficient to confer distinctiveness. The presence of small differences was not on its own sufficient to guarantee that a shape could fulfil the identificatory function of a trademark.

    A sign’s capacity to distinguish had to be assessed based on the reasonable expectations of the average consumer. There was therefore no need to take into account experts’ opinions or other investigations offered by the applicant as evidence of inherent distinctiveness. Even if they were considered, they did not relieve the examiner or the court of the responsibility to apply the point of view of the average consumer, as opposed to that of an expert, particularly where ordinary consumer products were concerned. The assessment was not in any event a comparison of the shape applied for with others in use. Instead, it was a comparison with “an ideal model” that would “naturally convey to the mind an image of the shape of the product.” If the shape applied for did no more than that, it would not be inherently distinctive.

     

    Comment

    Although the courts have been careful to emphasise that the test for registrability of shape marks is no more stringent than that for other categories of mark, there is no doubt that the bar is set higher.

    The ECJ has justified its approach on the basis that consumers are less used to perceiving shapes as indicators of origin. However, the way in which average consumers perceive marks is not necessarily obvious, and it is unfortunate that the Advocate-General upheld the CFI’s disregard of expert evidence in Mag Instrument. Even if the evidence is ultimately not considered probative, it should nevertheless be taken into account along with all other materials and circumstances that may cast light on how a sign is likely to be perceived by the relevant public.

    OHIM’s reliance on use of similar shapes by others as evidence that a shape is not distinctive is troubling. In the Advocate-General’s opinion last autumn in Henkel, the tablet shape applied for had not been common at the date of filing, but competitors had copied it before the marks could be registered. This fact was also taken into account in finding an absence of distinctiveness in that case, but the elision in both Mag Instrument and Henkel of the test for distinctiveness with that for whether a shape is in common use in the trade (a separate objection under Article 7 (1) (d)) is dangerous because it threatens to reward unscrupulous competitors who copy distinctive shapes quickly, by refusing protection to that distinctive shape and thus removing the risk of trade mark infringement. Competitors would not copy elements that were not in some measure distinctive, because they would not otherwise carry the message that the copied goods are the same as, or as good as, the originals. The Advocate-General’s opinion in Henkel that distinctiveness must be assessed both at the filing date and again before registration runs this risk to an extreme, and it is unfortunate that the ECJ did not expressly disapprove it. Where the shape of the goods is attractive enough to spark imitations, a would-be brand owner may find himself the victim of his own success.