TABLET CASES SHAPE UP

Yesterday the ECJ gave its judgment in Procter & Gamble v OHIM, considering whether a number of shape and colour configurations of dishwasher tablets were barred from registrability as CTMs for lack of distinctive character under Art.7(1)(b) of the CTM Regulations. The highlights of the ECJ’s judgment are as follows:

♦ In principle, a product’s shape and colour may be a trade mark. However, for this to be the case, they must be distinctive. The CFI was right to determine whether the mark was devoid of distinctive character by reference to (a) the products or services for which registration was sought and (b) the perception of the relevant public.
♦ The CFI’s criteria for assessing the distinctiveness of three-dimensional product shape marks were also correct. In principle the criteria are the same as for assessing the distinctiveness of all other types of marks. However, the public are not used to distinguishing products by their colour or shape or the shape of their packaging so it may be more difficult to prove that a 3D mark is distinctive.
♦ 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. Only a trade 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.
♦ The CFI’s assessment of these criteria in this particular case was a finding of fact and could not be reviewed unless the evidence submitted to it was distorted.
♦ The average consumer normally perceives marks as a whole. Therefore, the overall impression given by the mark must be considered in assessing distinctiveness. However, this does not mean that the assessing authority may not first examine each of the individual features of the get-up of the mark in turn. Thus, the CFI was not at fault in adopting this approach.
♦ The level of attention paid to dishwasher tablets by the average consumer was a finding of fact and therefore was not liable to be reviewed by the ECJ.
♦ The CFI was correct to find that it did not have to determine what the relevant date was at which distinctiveness had to be assessed because the marks for which registration was sought were not capable of identifying the origin of the products concerned and that that finding was not affected by how many similar tablets were already on the market.

The IPKat notes that the ECJ has not considered whether Art.7(1)(b) includes an assessment of whether there is a need to keep the applied-for mark free for others to use, even though this hot topic was mentioned in the CFI’s judgment. A similar issue has been considered in the Henkel case (also decided yesterday), but the decision has not been translated yet.