By judgment of 7 May 2015 (Case C-445/13) the Court of Justice has recently intervened on the issue of the distinctive character in the three-dimensional EU trademark.
The mark in question consisted of a transparent bottle of cylindrical form with a cap in contrasting colors and was filed to distinguish goods in classes 32 and 33.
The assessment is on the distinctiveness of that mark.
The Court of Justice observes that the General Court, after having examined separately each of the elements constituting the mark, concluded that
“the mark is made up of a combination of components, each of which is likely to be commonly used in trade for packaging the goods covered by the trademark application and is therefore devoid of any distinctive character in relation to those goods”.
In particular, the General Court noted that the cylindrical shape of the bottle is common to most of the bottles on the market and that, consequently, also a form of “perfect cylinder”, although characterized by a certain originality, could not be considered significantly divergent from the customs of the concerned sector.
Similar opinion was expressed for non-transparent cap, as it can hardly be considered
“to depart significantly from the norms or customs of the sector”.
As for the diameter of the cap, which is the same as that of the bottle, could be considered merely a variant of the existing forms. The General Court had then made a global assessment of the mark and concluded that
“the combination of the elements of the composite mark is not able to confer distinctive character to the same”.
In the case law of the Court of Justice,
“the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009.Only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of that provision”.
(C-136/02, paragraph 31 and C-98/11, paragraph 42).
The same judgment states that:
“where a three-dimensional mark is constituted by the shape of the product for which registration is sought, the mere fact that the shape is a “variant” of a common shape of that type of product is not sufficient to establish that the mark is not devoid of any distinctive character for the purposes of Article 7 (1)(b) of Regulation No. 207”009. It must always be determined whether such a mark permits the average consumer of that product, who is reasonably well informed and reasonably observant and circumspect, to distinguish the product concerned form those of other undertakings without conducting an analytical examination and without paying particular attention”.