The protection of 3D trademarks in Europe

“FREIXENET” Judgement of the Court of Justice of the European Union dated October 20, 2011 (C-344/10P and C-345/10P)

by Dr. Christian Thomas, KUHNEN & WACKER, Freising, Germany

1. In recent years the Court of Justice of the European Union has repeatedly dealt with the question of registrability of 3D trademarks. In one of the most noted judgements of the past few years the Court had denied the registrability of the widely known Lego brick because the mark consisted exclusively of the shape of goods required to obtain a technical result (cf. Judgement C-48/09 P). With its decision of October 20, 2011 (C-344/10P and C-345/10P), the Court of Justice of the European Union again commented on the criteria for the assessment of a trademark’s distinctiveness with respect to 3D marks.

2. To give you some background information: On April 1, 1996 the applicant had filed Community Trademark Applications showing representations of champagne bottles (without any labels) for the goods “sparkling wine” in class 33. In one of the applications, the applicant claimed the colour “matt golden” for its 3D mark and described the trademark as follows: “white polished bottle which, when filled with sparkling wine, takes on a golden matt appearance similar to a frosted bottle”.

2.1 At first instance, the responsible OHIM Examiner had dismissed the applications for registration of the marks on the ground that the marks were devoid of distinctive character. In the Examiner’s opinion the evidence put forward by the applicant was not sufficient to overcome the ground for refusal of a lack of distinctive character through the use of the marks, within the meaning of Article 7(3) of Regulation No 40/94.

2.2 The appeal that was filed against the above decision as well as the action brought to the General Court were not successful. Again, the General Court based its decision on the ground that the trademarks applied for were not distinctive, and argued that the trademark for sparkling wine was represented by the label, and not by the form of its packaging (i. e. the bottle). According to the General Court, the decisive element revealing the origin of the goods to consumers was the label attached to the wine bottle rather than the form of the bottle or its appearance. The consumers mainly focused on the label on a bottle, and not on the colour or surface of the glass. Thus, according to the General Court the colour and matting of the glass of the bottle could not function as a trademark for sparkling wine. In addition, the Court pointed out that according to its knowledge bottles were never sold without labels or any other kind of marking.

2.3 The remedy that was sought with the Court of Justice of the European Union led to the annulment of the appealed decisions. According to the Judgement, the statement that the colour and matting of the glass of a bottle could not function as a trademark for sparkling wine when they are not used in connection with a word element, is not a suitable argument to reject a trademark. According to the Court, this would in fact mean the end of 3D marks. In this respect the Court of Justice of the European Union points out that, on the one hand, the distinctiveness of a trademark is to be assessed with regard to the goods or services applied for, and on the other hand with regard to the perception of the trademark by the average consumers. The criteria for assessing the distinctiveness of three-dimensional marks that consist of the appearance of the product itself – as in the present case – are the same as for other categories of trademarks. However, according to the Luxembourg Judges, when those criteria are applied, it has to be taken into account that a 3D mark, which consists of the appearance of the product itself, will not necessarily be perceived in the same way by the average consumer as a word mark or figurative mark consisting of a sign which is independent of the appearance of the products it designates. In the absence of any graphic or word element, average consumers usually do not make assumptions about the origin of products on the basis of their shape or the shape of their packaging. According to the Court, a trademark can only be regarded as distinctive if it departs significantly from the norm or customs of the sector and thereby fulfils its essential function of an indication of origin.

According to the Court of Justice of the European Union, the General Court was mistaken in this respect: Instead of examining whether the trademarks applied for departed significantly from the norm or customs of the sector, the General Court had only argued that since bottles were not sold without any label, only word elements could indicate the origin of sparkling wine, so that the colour and matting of the glass of a bottle could not function as a trademark when they were not used in connection with a word element. If one followed this assessment of the General Court, this would mean that marks consisting of the appearance of the packaging of the product itself that do not contain an inscription or a word element, would be excluded automatically from trademark protection. However, this is not intended, and the decisions of the General Court were to be annulled since they infringed Article 7 of Regulation No 40/94.

2.4 The present Judgement by the Court of Justice of the European Union clearly sets out the registration prerequisites of a 3D mark and emphasizes the principles and criteria as regards the registrability of 3D marks. In particular, one of these principles is that the criteria for assessing the distinctive character of a 3D mark are generally the same as those applicable for other categories of trademarks. However, there is a certain restriction insofar as in general a 3D mark can only be regarded as sufficiently distinctive if the shape departs significantly from the norm or customs of the sector and can thus be perceived as an indication of origin. What is new about the present “Freixenet” Judgement, is the statement of the Court of Justice of the European Union that 3D marks consisting of the appearance of the packaging of the product itself do not necessarily require an inscription (or other word elements) in order to be regarded as sufficiently distinctive.