Keep calm and drink a glass of (melt)-water!

Beyond any weather forecast, it should have been a bad day in Luxembourg for Melt Water, the Lithuanian company which lost a couple of days ago on absolute grounds both trade mark cases T-69/14 and T-70/14 on appeal to the General Court.

Back in 2012 Melt Water applied to register a figurative sign for 'MELT WATER Original' (depicted on the right) and a three-dimensional sign representing a bottle shape (below, left), as Community trade marks (CTMs). Both applications claimed goods in class 32: 'beers; mineral and sparkling waters and non-alcoholic beverages; fruit drinks and fruit juices; syrups and other preparations for making beverages'. In both instances, the OHIM examiners rejected the application and the Board of Appeal confirmed the findings of their correspondent decisions.

The figurative mark 'MELT WATER Original' was considered to be descriptive and deprived of distinctive character, in that the relevant English consumers, reading the word elements 'melt', 'water' and 'original', would immediately realise that the contested mark identified products either made of water originating from natural and pure sources of glaciers or containing such water. Moreover, the application's figurative elements were not so fanciful to offset the mark's descriptiveness in relation to products for which protection was sought. The Board of Appeal concluded that the three-dimensional trade mark consisting of a bottle shape lacked distinctive character, in that the sign coincide with the common appearance of bottles. Indeed, observed the Board of Appeal, the majority of bottles in the market have a cylindrical shape which shrinks in the upper part, being that narrowing feature only a variant of the classical bottle shape.

On appeal, the General Court aligned its decisions to those of the examiners and the Board of Appeal by confirming the application of Articles 7(1)(c) and (b) of Regulation 207/09 in Case T-69/14, and of Article 7(1)(b) alone in Case T-70/14.

Case T-69/14

The Court first specified that the absolute ground of refusal based on descriptiveness pursues the general interest to keep signs descriptive of the goods and services for which protection is sought free for use. Such signs are inherently unable to serve as origin identifiers, as they have a direct and specific link with the relevant goods and services, as to allow the consumer immediately to perceive the description of those products and services or their characteristics without too much thinking.

Would it be immediately
perceivable at felin sight?

Melt Water did not contest the examiner's and Board of Appeal's findings that the products were directed at the average consumer having a normal level of attention, and that, in particular, the relevant public comprised the English speaking consumer in the EU, as the application's word elements were the English combination 'MELT WATER Original'. That said, the Court agreed with the Board of Appeal as to the perception of the relevant public of the combination of word elements here: terms describing the concerned goods as made of natural and pure water originating from glaciers.  The appellant challenged the Board of Appeal's affirmation of the examiner's interpretation of the meaning of the words 'melt' and 'water' as being too broad. The Court however held that this challenge was completely unfounded.

In relation to the figurative elements, namely the sky blue rectangular-vertical background and the word elements' fonts, the Court considered that they were less prominent than the word parts, which encompassed the mark's dominant components.   Moreover, considering the goods for which protection was sought, the sky blue rectangle was an ordinary element, in that water is also commonly described having a light blue colour. Finally, the Court held that the use of a different font for the word 'original' only served to emphasise that the “melt water” was really originating from glacial sources, in order to underline the provenance of the water contained in the bottle.

As the General Court found that the absolute ground of refusal under Article 7(1)(c) was applicable, it affirmed that it was sufficient to reject the CTM application for MELT WATER Original, without any further analysis of Article 7(1)(b).

Case T-70/14

The General Court took the opportunity to go over the settled case-law of the Court of Justice of the European Union concerning three-dimensional marks consisting of a bottle shape, with special attention to Freixenet (Joined Cases C-344/10P and C-345/10P).

The Court recited that a trade mark has distinctive character if it can serve as an origin identifier and can distinguish the goods and services of one undertaking from those of its competitors. The distinctiveness assessment must be made by reference to the goods and services for which protection is sought and by reference to the perception of the consumers of those goods and services: in the case at hand, current consumption products directed at the EU average consumer, reasonable well informed, observant and circumspect.

Those two criteria also apply to three-dimensional marks which consist of the appearance of the product itself. However, the relevant consumers' perception could not be the same as for word or figurative marks, since the average consumer is not familiar with linking the origin of a product with its shape or packaging. This is even more so in relation to liquid products, whose packagings are perceived as a functional means of overcoming material constraints. The Court observed that the perception of liquid products' packaging was not the sole reason for which the Board of Appeal rejected the CTM application, despite Melt Water's assertion. Instead, the appealed decision only compared the greater difficulties faced in assessing the distinctive character of a three-dimensional mark than of a word or figurative mark.

A three-dimensional sign would be distinctive if it serves an origin identifier for the average consumer of the products covered by that mark, without “any detailed examination or comparison and without being required to pay particular attention”, as explained in Henkel (C-218/01) and Forme d'une bouteille de bière (T-399/02). That would be the case if the mark departed from the customs of the sector, which did not occur for Melt Water's bottle according to the General Court: a cylindrical shape which tapered at the top was a common feature in bottles; no evidence of the unusual size of the bottle was provided and the trade mark representation could not help in measuring its size; the hexagonal upper part of the bottle was a consequence of its tapering shape and encompassed only a variant of common bottle shapes. Finally, whether the bottle had been projected by a professional designer and was the result of a creative process was completely irrelevant to the distinctiveness assessment.

Final remarks

In both its decisions the General Court rejected the appellant's argument that OHIM did not apply the principles of equal treatment and good administration when it decided these cases, since it did not follow the decisions of previous similar disputes.  Said the Court, those principles must be applied in compliance with the principle of legality and a trade mark applicant cannot therefore benefit from previous decisions taken in someone else's favour. Likewise, for the sake of the legal certainty, a decision should be taken only after a stringent and full examination of the circumstances of each case, as the Board of Appeal did when it considered the perception of the relevant public and stated that the figurative application was descriptive while the three-dimensional application lacked distinctive character.

In relation to the latter sign the Court added that although that mark had been registered in several countries around the world, EU Member States included, the CTM system is autonomous and pursues its own and specific objectives, so that it is also independent from the national ones. 

There was a happy ending of sorts for the Lithuanian company, though: it finally got a CTM for goods in class 32, this being figurative 'Nueva Melt water original' mark. This time, the secret ingredient was a bit of linguistic wordplay so that, according to OHIM practice, both Spanish and English consumer were deemed to be surprised by the overall impression of the foreign word combination, which ultimately was held capable of identifying Melt Water's beverages in the market.