NO 3D FOR SISI

The IPKat brings you tidings of a CFI case concerning the registrability as a trade mark of the 3D shapes of stand-up pouches for drinks, where the court focused particularly on the meaning of Article 7(1)(b) of Community Trade Mark Regulation 40/94. Deutsche SiSi-Werke (DSW) applied to register the 3D shape of various stand-up pouches for packaging drinks. The pouches were convex, were wider at the bottom and, viewed straight on looked, depending on the application concerned, like an elongated triangle, or an oval with concave sides. The examiner rejected the application for goods in Classes 32 and 33, as did the Board of Appeal, which held that the marks applied for were not distinctive as they would not be perceived by consumers as an indication of origin and, in the interests of competitors, there could be no monopoly in this type of packaging.

DSW appealed to the CFI which rejected Deutsche SiSi-Werke’s appeal:

♦ DSW was wrong to say that, by giving as a reason for its decision the necessity of preserving the availability of the sign for other undertakings, the Board of Appeal was basing its decision on Article 7(1)(c). Article 7(1)(b) was the only ground mentioned in the contested decisions. Additionally, the need to avoid the creation of monopolies is not the exclusive preserve of any one of the absolute grounds. Instead, it lay behind all of Articles 7(1)(b) to (e).
♦ DSW was wrong to argue that the Board of Appeal’s assessment under Article 7(1)(b) was incorrect. That article precludes from registration any marks which are incapable of exercising the essential function of a trade mark, which is to identify the commercial origin of the goods or services in question. Marks which are commonly used in the trade for the presentation of the goods or services in question, or for which there is concrete evidence that they could be used in such a way cannot carry out that essential function and are hence excluded from registration by Article 7(1)(b).
♦ The interest of an applicant’s competitors in being able to freely choose shapes and patterns for their own products is not in itself a ground for refusing the registration of a three-dimensional mark consisting of a product’s design, nor is it a criterion sufficient in itself for the assessment of a mark’s distinctive character. This is because Article 7(1)(b) only protects any interest that there may be in keeping such marks available to the extent that they are not capable a priori and irrespective of the use mark of them under Article 7(3) of functioning as a trade mark by enabling the relevant public to distinguish the product concerned from those having a different trade origin.
♦ A sign’s distinctiveness can only be assessed (i) by reference to the goods or services for which registration is sought and (ii) on the basis of the perception of that sign by the relevant public.
♦ Since fruit drinks and juices are intended for everyday consumption, the relevant public consisted of all end consumers. While the public is used to recognising word marks as trade marks, this is not necessarily the case where the sign is indistinguishable from the appearance of the product itself. Since liquids must of necessity be packaged for sale, the average consumer will perceive the packaging mainly as a means for packaging the product for sale.
♦ A sign which fulfils functions other than that of a trade mark can only be distinctive for the purposes of Article 7(1)(b) if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin.
♦ Consideration of internet sites showed that certain beverages were already packaged in stand-up pouches and the practice was likely to become common for all types of beverages. That form of packaging was not therefore unusual and so was not sufficiently unusual for the average consumer to perceive it per se as an indication of the specific commercial origin of a product within that category.
♦ The fact that the type of packaging had been used for the products at issue for a long time without being imitated was only relevant under Article 7(3) and did not make the packaging inherently distinctive.
♦ Most of the design features mentioned by DSW as being distinctive either coincided with the standard shape of stand-up pouches or were too insignificant to be capable of being memorised by the relevant public. Nor did the product features that were significant distinguish DSW’s goods. The basic pouch shape corresponded to the basic geometric shapes that could be used for stand-up pouches and, because of technical constraints, the oval and triangular shapes looked like squares or rectangles. Their concave sides would be seen by the average consumer as making them easier to hold. Their metallic finish would also not be seen as indicating their commercial origin as it would be seen as the result of the play of light on grey, deriving from the constituents of the foil used in the manufacture of the pouches. Finally, taking the appearance of each pouch as a whole, the differences between their appearance and the standard appearance of stand-up pouches constituted mere variations which were too minor to be retained by the average consumer as an indication of the commercial origin of the products concerned.
♦ The Board of Appeal was entitled to mention the risk of a monopoly being created in stand-up pouches since its findings confirmed that the pouches were devoid of distinctive character, reflecting the general interest underlying the absolute ground for refusal founded on Article 7(1)(b). Additionally, the risk of a monopoly being created was greater than usual here because the applications covered a large number of variations of the standard form of stand-up pouch.

The IPKat is confused by this decision. At some points the CFI states that the need to keep marks free for competitors underlies Article 7(1)(b) but elsewhere it says that the interests of competitors under that article are only relevant in so far as the mark is incapable of acting as a trade mark to distinguish the goods of the applicant from those of other undertakings. Can both these propositions be simultaneously true? The IPKat also notices that the same Court, in Nestlé Waters France v OHIM, was prepared to concede that a bottle shape could be inherently distinctive even though each of its component parts was not. Some careful thinking may be needed if these two decisions are to be reconciled.

Diplomatic pouches here; clown pouches here; pouchboats here
How the kangaroo got its pouch here; rat pouch here