Two skulls are confusingly similar – Crystal Head Vodka successfully enforced its 3D trade mark

In the spirit of Halloween, the IPKat is bringing you a spooky trade mark infringement decision. It involves the iconic skull bottle of Crystal Head Vodka and a hauntingly similar skull-shaped bottle design. The decision of the Higher Regional Court of Hamburg probably sent shivers down the spine of the defendant.

Background

Globefill owns EU trade mark no. 015736622, registered in 2017 inter alia for ‘vodka’. It is a 3D mark for the following sign:

A third party had filed an invalidity application against this mark, arguing that the sign lacked distinctiveness (Art. 7(1)(b) EUTMR) and that the shape gave substantial value to the trade mark (Art. 7(1)(e)(iii) EUTMR). The EUIPO rejected the application (decision here).

Globefill also owns EU design no. 000874268-0001, registered in 2008 for ‘bottles’ with the following views:

The EUIPO rejected an application for invalidity against this design (decision here).

Globefill sold vodka in bottles having the shape of the EU trade mark depicted above known as ‘Crystal Head Vodka’. They were promoted by its co-founder and actor Dan Aykroyd.

Kefla-Glas GmbH & Co. KG (‘Kefla’) owns German 3D trade mark no. 302016027526 for the following sign:

It was registered in 2018 for ‘wines; spirits and liqueurs; alcoholic beverages except beer’.

Kefla produced and sold bottles in the shape of its German trade mark to beverage producers, which fill the bottles usually with spirits and sell them.

Globefill sued Kefla and requested an injunction as well as a declaration of invalidity of Kefla’s German trade mark. Globefill based its complaint primarily on the infringement of its EU trade mark, in the alternative on its registered design and further in the alternative on the copyright to the bottle design.

The District Court of Hamburg dismissed the action because it considered Kefla’s trade mark to be sufficiently different to not infringe Globefill’s trade mark, design and copyright. Globefill appealed to the Higher Regional Court of Hamburg. Kefla filed a counterclaim for a declaration of invalidity of Globefill’s EU trade mark under the condition that the court considered the action to be well-founded. The counterclaim was based on a lack of distinctiveness (Art. 7(1)(b) EUTMR) and that the shape gave substantial value to Globefill’s trade mark (Art. 7(1)(e)(iii) EUTMR).

The Higher Regional Court’s decision

The Higher Regional Court of Hamburg upheld the appeal and granted the claims on the basis of trade mark infringement. The judges dismissed Kefla’s counterclaim (case 5 U 62/22).

1. Infringement claim

In line with the case law of the German Supreme Court, the judges found that Kefla’s application and registration of its German trade mark created a risk that Kefla began using this sign for the goods covered by the mark. This was sufficient for a threatened trade mark infringement under Art. 130 EUTMR.

Thus, the Higher Regional Court did not base its judgment on Kefla’s actual sale of the empty bottles to its customers but rather on the threat of Kefla using its trade mark for the registered goods (i.e. ‘wines; spirits and liqueurs; alcoholic beverages except beer’).

Since Globefill’s trade mark was still in the five year grace period for non-use when the infringement action was filed, the goods in question were deemed to be identical.

a. Distinctiveness of the bottle shapes

One of the main point of dispute between the parties was the question whether the shapes of the bottles were distinctive and consequently perceived as trade marks.

The Court found that Globefill’s trade mark had an average degree of distinctiveness. The judges referred to consistent case law, according to which a mark that consists of the shape of the goods is distinctive only if it deviates significantly from the norms or customs in the relevant sector and thereby fulfils the origin function. It may also be considered whether there is a custom in the relevant sector to design the goods or their packaging in a way that indicates the commercial origin.

The Higher Regional Court held that bottles for spirits usually had a traditional shape, namely a slim cylindric body with a long slim neck. The shape of Globefill’s ‘glas skull’ deviated significantly from this norm. The judges also concluded from various 3D trade marks registered with the German Patent and Trade Mark Office that it was customary that the shape of bottles indicated the commercial origin.

The Court considered the level of distinctiveness of Globefill’s trade mark to be average. Neither Kefla’s argument that the distinctiveness was weakened by third party use of similar shapes nor Globefill’s assertion of significant sales leading to an increased distinctiveness were successful.

b. Similarity of the signs

The judges considered the signs to be similar to an average degree.

The Court deemed decisive whether the more distinctive and dominant elements in the overall impression of the earlier mark were repeated in the contested sign. If the consumer was used to seeing many similar shapes in the relevant sector, notable differences may more easily lead to a different overall impression.

The Court found that the signs could be compared visually and conceptually but a conceptual similarity on its own would not be sufficient to conclude that a likelihood of confusion exists.

The dominant and distinctive elements of Globefill’s sign were found to be:

• a transparent glass bottle with a short, slightly slanted bottle neck;
• the bottle represented the three-dimensional reproduction of a human skeletonized skull;
• the skull was characterized by eye sockets, protruding cheekbones, a nasal bone without an adjoining nasal septum cartilage, so that the nose appeared shorter in comparison to the non-skeletonized face;
• both rows of teeth of the upper and lower jaw could be seen;
• the mouth was slightly opened.

The judges found that Kefla’s bottle showed the same features.

The fact that Globefill’s bottle consisted almost entirely of the skull’s shape while the skull in Kefla’s bottle appeared to be applied to the front of the bottle merely prevented a high degree of visual similarity. The front view, which was similar in both cases, was more important because consumers would perceive the bottle from the front when they encountered them on store or bar shelves.

Furthermore, in the imperfect recollection of consumers, the similar elements would be more pronounced than the differences.

The Court found that conceptual similarity exists when consumers describe the marks with the same word and find that word to be obvious, straightforward and exhaustive to describe the signs. The judges held that consumers would describe both bottles as ‘skull bottle’ or ‘death’s head bottle’. As a consequence, the signs were found to have an average degree of conceptual similarity.

c. Likelihood of confusion

On the basis of an average degree of distinctiveness of Globefill’s trade mark, identity of the goods and an average degree of similarity of the signs, the Court concluded that consumers could directly confuse the trademarks.

As a result, Kefla was ordered to cease and desist from using its German trade mark and to agree to surrender it.

2. The counterclaim

a. Art. 7(1)(b) EUTMR

With respect to Kefla’s claim that Globefill’s trade mark lacked distinctiveness, the judges referred to their finding that the shape deviated significantly from other bottle shapes.

The hit list of an online search and a list of trade mark registrations for allegedly similar trade marks were deemed irrelevant because they did not show whether the relevant public was used to such shapes.

b. Art. 7(1)(e)(iii) EUTMR

The Court also rejected Kefla’s contention that the shape gave substantial value to the goods.

The judges referred to the Gömböc decision of the Court of Justice of the EU (IPKat here and here), which found that the application of this ground for refusal must be based on an objective analysis, intended to demonstrate that the shape in question, on account of its characteristics, has such a great influence on the attractiveness of the product that restricting the benefit of the shape to a single undertaking distorts the conditions of competition on the relevant market. It must be apparent from objective and reliable evidence that a consumer’s decision to purchase the goods in question is, to a very great extent, determined by one or more features of the shape.

The Court found that there was no appreciable price difference between Globefill’s vodka and other premium vodka brands. There was also no indication of a marketing strategy which focused on the bottle shape. Rather, the quality of the vodka and the actor Dan Aykroyd were the main themes of the promotional activities.

The mere fact that the design increased the value of the goods was not deemed sufficient because every design is supposed to do that.

For these reasons, the Court held that the bottle shape did not give substantial value to the goods in question.

Comment

The case is quite unique in the sense that the contested sign only consisted of a bottle without any traditional trade marks such as word and device marks. If such marks were part of the contested product, the assessment would have been much more complex because it would have to be ascertained whether the public understood the shape as an indication of the commercial origin despite a (more or less prominent) word and/or figurative mark.

The same holds true for the question of genuine use if Globefill’s vodka is sold with the word mark ‘Crystal Head Vodka’ on the bottle. The German Supreme Court’s VW Bulli decision showed the difficulties of establishing genuine use for 3D trade marks (IPKat here).