The Court of Appeal gave its ruling last Friday, in Bongrain SA's Trade Mark  EWCA Civ 1690, that the unusual shape of a piece of cheese was not sufficiently inherently distinctive for it to secure trade mark registration in the absence of evidence of distinctiveness acquired through use.
Bongrain applied to register as a trade mark (i) a three-dimensional shape and (ii) the same shape with a "ridged effect" on the surface (click here for official pics). The application related to a French cheese that was supplied as a whole cheese in a "six-lobed" or "flower" shape, with some superficial ridging. Bongrain argued that the fact that the shape was strikingly unusual was enough to give it distinctive character under Article 3(1)(b) of Directive 89/104 (s.3(1)(b) of the Trade Marks Act 1994). The application failed and Bongrain appealed.
The Court of Appeal dismissed Bongrain's appeal, holding as follows:
* There was a public interest in the need to preserve certain signs for other traders to use in the same or similar fields so as to maintain freedom of action and healthy competition (Case C-104/01 Libertel Groep BV v Benelux Merkenbureau  ETMR 63 and Case C-363/99 Koninklijke KPN Nederland v Benelux Merkenbureau  ETMR 57 considered).The IPKat persists in wondering whatever happens to the "need to keep free" at the point at which a shape that is consistently used by one trader and which becomes associated with him is regarded as having acquired distinctiveness. Merpel says "why ever were people allowed to become obsessed by "need to keep free" anyway? Before the term was brought into European trade mark jurisprudence by the European Court of Justice, did traders in countries that didn't have that doctrine really suffer?
* The fact that a shape was unusual was insufficient to confer upon it an inherently distinctive character since the public would not automatically take it as denoting its trade origin, which was the function of a trade mark. The public was not used to mere shapes conveying trade mark significance (Joined Cases C-456/01 P and C-457/01 P Henkel v OHIM considered).
* On the evidence it could not be said that the shape had acquired distinctiveness, so the claim that the mark was distinctive in fact under Article 3(3) failed.
Distinctive cheese phenomena here and here