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Wednesday, 6 May 2009

Sausage configuration over-analysed to death in CTM application

The IPKat has been perusing today's solitary Community trade mark decision from the Court of First Instance, Case T‑449/07Thomas Rotter v Office for Harmonisation in the Internal Market. Rotter applied to register the pretzel-shaped configuration of sausages as a Community trade mark for the following goods and services:

– Class 29: ‘Meat, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; milk and milk products; charcuterie; potato products’;

– Class 30: ‘Sugar, rice, preparations made from cereals’;

– Class 43: ‘Providing of food and drink; temporary accommodation’.


The examiner accepted the application for the Class 43 services. After all, they were hardly descriptive of temporary accommodation and didn't need to be kept free for other providers of food and drink. However, the application was rejected for the goods in Classes 29 and 30 for want of distinctive character, so Rotter appealed.  The Board of Appeal was unimpressed. In its own inimitable style it ruled:
"as regards, in particular, charcuterie, the shape for which registration was sought corresponds to an arrangement of five separate sausages, the ends of which are all linked to one another. ... attaching sausages to one another by their ends so that they constitute an unbroken chain is a common practice and one that is imposed by production. In addition, ... the average consumer would not perceive such a presentation of the goods as an indication of their commercial origin, but solely as one way, among many others, of linking a number of sausages to store them and sell them together. ... that was not such as to confer distinctive character on the shape applied for".
Rotter then appealed to the Court of First Instance, meanwhile rather provocatively limiting his specification in Class 29 to the offending term 'charcuterie'.  The Court dismissed the appeal. It said, in relevant part:
"28 ..., suffice it to state that, as the Board of Appeal correctly pointed out, gathering sausages together by their ends in order to store and sell them together is a common practice in trade.

29 ... the applicant is simply comparing the shape applied for, consisting of a combination of a number of sausages, with the shape which he considers to be typical, that of a single sausage. To the extent that – as the applicant himself acknowledges – the arrangement at issue is noticeable, such a comparison is manifestly immaterial, so that the argument has no factual basis.

30 ... it is clear from the examination ...  that [Rotter] has not shown how the shape applied for differs significantly from the usual shape in which sausages are presented in trade.
...
32 That finding cannot be called into question by the applicant’s argument that the presentation of the sausages in the shape of an arrangement, which, in turn, creates an association with a known shape – namely that of a pretzel – from another sector of foodstuffs, is also not a form in which the goods at issue are usually presented to the consumer.

33 Thus, ... although it is similar to the shape of a pretzel, the shape applied for is not completely identical to that shape. Therefore, although ...  the shape applied for constitutes an original, even unusual, presentation of charcuterie, it is nevertheless the case that the average consumer will not associate it with that of a pretzel, and will perceive merely a collection of five sausages linked to one another.

34 That finding can also not be called into question by the applicant’s argument that the shape applied for differs even more significantly from the form in which the goods at issue are normally presented to the consumer in that the use of a novel form of presenting charcuterie, intended to encourage sales, is in itself a new commercial phenomenon".
The IPKat has some sympathy for Mr Rotter. A single circle cannot be distinctive of goods or services, but put five such circles together and you have one of the most powerful trade marks in the world -- the Olympic symbol. Why cannot that which cannot be achieved by a single sausage be achieved by five? Merpel says, from a consumer's point of view this pretzel is to sausages what BABY-DRY is to word marks: a sausagally unusual juxtaposition.


Sausage dog here
Olympic sausage here
Olympic sausage trials here
Cumberland sausage here

3 comments:

Anonymous said...

Good point Merpel; I've never seen that kind of arrangement of sausages in Waitrose. Having said that there's no way that if I did, I would give it any TM significance. I'd just assume the butcher was having a bit of a laugh. Poor old Mr Rotter; why not just use a proper TM like "Rotter's Pretzel Bangers". On second thoughts.....

mcvooty said...

Even if the pretzel shape is accepted as distinctive, there are practical and commercial limits to the number of geometric configurations in which linked sausages can be configured, and on that basis, none should be trademarkable.

Anonymous said...

Sounds too cut and dry mcvooty. You'd still have to do a proper distinctiveness examination (see, pretty recently, eg Case T-23/07)and not rule out the mark a priori.

Registries aren't sausage factories (boom boom) you know !

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