Norms of the sector and three-dimentional marks' distinctiveness: a complicated relationship.

Another controversial case entailing a community trade mark consisting of the shape of a product has kept first the General Court, and then the Court of Justice, busy.

This latter gave its judgment in case C-445/13 P confirming the General Court's findings on the invalidity for lack of distinctive character - Article 7.1.b of Regulation 207/2009 - of the three dimensional mark held by Voss of Norway ASA, namely a transparent cylindrical bottle featuring a non-transparent cap having the same diameter as the bottle - below on the right, registered for goods in classes 32 and 33. The three-dimensional mark was challenged before the OHIM by the company Nordic Spirit AB which sought and obtained its cancellation.

The contested 3-D mark

By way of summary, the General Court ruled on a decision of the Board of Appeal which was grounded on two independent pillars of reasoning, as confirmed by the parties at the hearing before the Court.

The first pillar dealt with Board of Appeal's argument that it is common knowledge that beverages are sold in bottles, cans or other forms of packaging which bear a label with a word or a figurative sign which are the element distinguishing the beverages in the market. Voss was not able to provide evidence to the contrary [and, indeed, some of its bottles were also characterised by the word mark VOSS placed on them].

The VOSS word mark plus the 3-D mark?
Or the VOSS word mark over the Voss' bottle?

The second pillar referred to the Board of Appeal's independent analysis of the contested mark's distinctiveness and the related conclusions that such shape of a bottle was not significantly different from other shapes of bottles for beverages, that it was solely a variant of the appearance of the bottles and that, therefore, it did not depart from the norms or customs of the beverage sector.

Voss appealed to the Court of Justice presenting six grounds of appeal. Curiously, in the defence of Voss' claims, INTA, whose annual meeting has just ended in San Diego, was granted the leave to intervene in support not only of Voss' interests but in general of all its members in respect of 'the assessment of the validity of three-dimensional marks'.

The Court of Justice rejected the first ground of appeal contending that the General Court did not take into account Voss' claim that the burden of the proof of the contested mark's distinctiveness had been unduly imposed on it, despite the presumption of validity following from the registration. Contrary to what was argued by Voss, the General Court had considered that such claim was directed against the first pillar of the contested decision and not against the Board of Appeal's reasoning on the distinctiveness analysis, which in any case excluded any imposition of the burden of the proof on Voss.

The second ground of appeal opposed the alleged shift of the burden of the proof from Nordic Spirit, which did not provide any evidence of the non-distinctiveness of the contested mark, to Voss. In relation to this argument Voss was sided by INTA which also underlined that a registered Community trade marks enjoys a presumption of validity.

The Court of Justice observed that the General Court assessment not only analysed the mark's components, namely the transparent cylindrical body and the non-transparent cap, and correctly concluded that they were devoid of distinctiveness, but also considered whether as a whole the mark could be distinctive because of the combination of its elements. However the General Court could not find any evidence to this effect, since the mark was simply the sum of its non-distinctive parts.

Nor could INTA's argument that the average consumer can perceive the packaging of goods as a trade mark prosper insofar as the General Court found that Voss filed no evidence to substantiate such argument.

Then the Court of Justice denied that that the General Court did not define the norms and customs of the beverages sector against which to establish whether the three-dimensional mark had distinctive character: the General Court relied on well-known facts, when it stated that the majority of the bottles in the sector have a cylindrical section and that their caps are usually made of a different material and have a different colour.

Likewise the Court of Justice rejected the INTA's contention that the mark at issue could depart form the norms and customs applicable, challenging the General Court's recognition that  “it was not established that there were other, similar bottles in the market”...that the bottle was “one of a kind”...and “somewhat original”.

All in all, the three-dimensional mark was a mere variant of a common shape of a bottle according to the General Court, and this circumstance was not sufficient to award the mark the needed distinctiveness within the market. This was so, said the Court of Justice, in compliance with the relevant case-law on the criteria for assessing the distinctive character of three-dimensional mark, despite the INTA's contention that solely the norms and the customs of the sector should be the point of reference.

Departing from the norms of the sector.

In regard to the fourth ground of appeal, the Court of Justice added that the General Court correctly analysed the contested mark in order to assess its distinctiveness, in that the examination covered both the mark's components and its overall impression. Simply, the General Court set out that the contested mark was to be considered the sum of its parts, a bottle and its cup, which were not distinctive per se nor in their combination, encompassing the general common packaging for beverages.

Finally, the Court of Justice stated that on the basis of the mentioned overall impression the General Court drew the right conclusions that the mark was nothing more than the sum of its elements and, therefore, according to the case-law on composite marks having each component devoid of distinctive character, the mark was not distinctive.

In the light of this case, this Kat might infer that there should be more coordination between the threshold to comply with trade mark requirements when right holders seek to protect a shape of a product as a trade mark at the registration stage and the threshold to afterwards maintain the rights in the three-dimensional mark.