3D bottle trade mark distinctive but rejected on functionality grounds

The registration of 3D trade marks in the EU is challenging. Even if the shape is sufficiently distinctive because it departs significantly from the norms and customs of the sector concerned, it can still be subject to a rejection on functionality grounds, as the judgment Wajos v EUIPO (Forme d´un contenant) in case T-10/22 shows.

Background

Wajos GmbH (‘Wajos’) applied for registration of the following 3D EU trade mark no. 014886097 for various foodstuffs and beverages in classes 29, 30, 32 and 33:

The EUIPO Examiner and the Board of Appeal (‘BoA’) rejected the application because it lacked distinctiveness (Art. 7(1)(b) EUTMR). Upon appeal, the General Court annulled the decision of the BoA because the judges found the combination of the sign’s elements not to be common. The overall impression deviated significantly from the norms and customs in the relevant sector. The form was therefore considered to be distinctive. The BoA reopened the application proceedings and rejected the mark on the basis of Art. 7(1)(e)(ii) EUTMR. The norm provides that signs cannot be registered if they consist exclusively of the shape or another characteristic of goods, which is necessary to obtain a technical result. Wajos appealed to the General Court.

The General Court’s decision

The General Court dismissed the appeal.

First, it held that the BoA was not precluded from reviewing another absolute ground for refusal after the General Court annulled the BoA’s first decision, in which it rejected Wajos’ application due to lack of distinctiveness. The absolute grounds in Art. 7(1) EUTMR apply independent of each other. If the General Court annulled a decision, which is based on a particular ground for refusal, the BoA must assess in the reopened proceedings whether any other ground applies.

Turning to the question whether Wajos’ application had to be rejected because of Art. 7(1)(e)(ii) EUTMR, the General Court considered that every shape of a good is to some extent functional and it would be inappropriate to exclude such a shape from registration simply because it has characteristics of use. With the words ‘exclusive’ and ‘required’, Art. 7(1)(e)(ii) EUTMR ensures that those forms of goods which only embody a technical solution and whose registration as a trade mark would actually impede the use of this technical solution by other companies cannot be registered.

The provision requires a two-step process: (1) Identifying the essential (i.e. most important) characteristics of the sign and (2) ascertaining whether they all perform a technical function.

One or more minor arbitrary elements do not prevent Art. 7(1)(e)(ii) EUTMR from applying if all other essential elements perform a technical function. Rather, an important non-functional element, such as a decorative or imaginative element, must be present. Art. 7(1)(e)(ii) EUTMR also applies when other forms exist that fulfil the same technical function.

The General Court confirmed the BoA’s finding that the following essential characteristics of Wajos’ application perform technical functions:

•  A tapered inflow and outflow area, which allows or facilitates the appropriate pouring of the content and which prevents or makes it more difficult for the content to leak or spill when the container is moved;
• A bulgy main part, that tapers upwards and downwards, which allows the storage of the goods for which registration was sought;
• A beading, which separates the broader upper part from the narrower lower part of the container. It enables the container to be stored in a hole, for example on shelves designed for that purpose. The bulgy body makes it easier to insert the container into such a hole.

Wajos argued that the beading is not merely functional but connects the upper and lower part of the container in an unusual and aesthetic way. The General Court countered that Art. 7(1)(e)(ii) EUTMR is not excluded because an essential and functional element has an aesthetic appeal or is unusual.

The judges also rejected Wajos’ argument that the particular form of the beading is not necessary for the container to be stored on a shelf or otherwise. As set out above, it is irrelevant that other forms exist, which fulfil the same technical function. Beyond that, the beading provides better stability than other forms might do.

Wajos contended that the combination of the elements produced an aesthetic overall impression, which is non-functional. The General Court held that this is not a consideration that can be taken into account.

Comment

The General Court’s decision is consistent with the rather strict case law on functionality grounds. If all essential elements of the shape are functional, it does not matter how aesthetic or unusual they are. The purpose of Art. 7(1)(e)(ii) EUTMR is to prevent trade mark protection from granting its proprietor a monopoly on technical solutions or functional characteristics of a product which a user is likely to seek in the products of competitors (C-53/01 to C-55/01 at para. 72). If an important additional and non-functional element is added, the absolute ground for refusal of Art. 7(1)(e)(ii) EUTMR may be overcome. However, there is a high probability that courts would narrow the scope of protection to that additional and non-functional element.