Yesterday, Advocate General Ruiz-Jarabo Colomer delivered his Opinion in the joined cases of Henkel v OHIM and Procter & Gamble v OHIM, where the two companies appealed against CFI decisions that the three dimensional shape of their small blocks of compressed detergent with different colour layers and coloured speckles intended for use in washing machines or dishwashers were devoid of distinctive character under Article 7(1)(b) of Regulation 40/94 and hence were not registrable as CTMs. The Advocate General opined as follows:
1. Distinctiveness should be judged both at the time of application and at the time of registration. Distinctiveness at the time of registration had to be relevant because a mark is liable to be declared invalid under Article 51 if it ceases to be distinctive. It would make no sense if a mark was granted because it was distinctive at the time of application but then was immediately liable to be declared invalid because it had ceased to be distinctive by the time it was registered. The problem of signs that have lost distinctiveness through being copied during the registration procedure would be avoided because the Office excluded from its analysis of distinctive character other operators’ signs that have been used solely to obstruct the registration of the applied-for mark.
2. It was incorrect argue that it is unnecessary for OHIM to be particularly strict when assessing the distinctive character of a sign since the interests of competitors are protected by the defences recognised in Article 6 of Dir 89/104 and Article 12 of Reg 40/94. The question of distinctiveness is meant to be assessed by the Office at the examination stage, and not by the court in an infringement action, especially because leaving the task to the courts would put competitors at a disadvantage as there is a reluctance to question official documents once a mark is registered.
3. A mark isn’t distinctive just because there are no other products on that market with that feature since it is not the number of products on the market that it is determinative of distinctiveness. Instead, it is how the average consumer perceives them. Additionally, the number of products on the market is of no assistance where a mark is descriptive.
4. The CFI’s finding on the degree of attention paid to the tablets by the average consumer was a finding of fact so could not be re-examined by the ECJ. However, if the degree of attention was a legal issue, it made sense that the average consumer’s level of attention for everyday goods would be lower than his attention for luxury goods.
5. The CFI was right to judge distinctiveness by comparing the marks applied for with a paradigm composed of features which spring to mind if the shape of the product is imagined and then determining if the features that were found in the applicant’s shape but not in the paradigm were distinctive, rather than comparing it to shapes of products already on the market because the CFI’s test was less dependent on the vagaries of the market. However, it would be more fitting to carry out such an analysis under Article 7(1)(c) (descriptiveness) because the examiner is looking at whether the sign is no more than a representation of the graphic description of the product. Conducting that analysis would also enable the examiner to look at whether there is a need to keep the shape free for other traders – a consideration that cannot necessarily be assessed under Article 7(1)(b). Since the CFI’s basic test was correct, the court should not consider whether the CFI was correct to find that the arrangement of colours and the rounding edges of the tablet were not distinctive since this was a question of fact within the jurisdiction of the CFI.
6. While it was uncertain whether the Article 7(1)(c)-type analysis of whether a sign needs to be kept free for other traders to use could be considered under Article 7(1)(b), this did not mean that extensive protection should be granted to signs which aren’t descriptive, but are for other reasons devoid of distinctive character. This is because there is a general interest in maintaining in the public domain signs which are incapable of identifying the commercial origin of the goods or services which they designate. However, the Libertel principle of exhausting the limited range of colours available and thus giving certain competitors an anti-competitive advantage did not apply to shapes. Additionally, the CFI was possibly in error in saying that all of the absolute grounds for the refusal of registration in Article 7(1)(b) to (e) were meant to prevent the grant to one operator alone of exclusive rights which could hinder competition on the market for the goods or services concerned. Nonetheless, in the test of comparing the applicant’s shape to an obvious shape (the ideal paradigmatic concept of the product i.e. how it “instinctively comes to mind”) to assess its distinctive character, the CFI had not improperly employed the “keep free” criterion.

The IPKat isn’t quite sure how one decides what the paradigmatic shape of a product is. The IPKat would base his idea of what such a shape would be on shapes which were already on the market (for example, the IPKat’s idea of a notional washing tablet would almost certainly be square), which is problematic if the shape is of a product which is not yet on a market. If anyone has any bright ideas about how the determination of paradigm shapes should be conducted, please let the IPKat know. The kurious kat also notes that the Advocate General is very much in favour of limiting “keep free” type arguments to Article 7(1)(c)-(e) as the recent DOUBLEMINT case suggests but he is somewhat puzzled by the Advocate General’s comments on there being a public interest in keeping signs that are not descriptive but are also not distinctive in the public domain. The tension between these two ideas remains to be resolved.

Detergents: history
Soaps and detergents here
How Henkel keeps Germany clean here
Some famous tablets here and here (at p. 2)


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