Legal Updates

Intellectual Property Law – Community Trade Mark – Lack of Distinctive Character – Registration of a 3D Mark – Trade Mark Law

The case of Proctor & Gamble Company v Office for Harmonisation of the Internal Market (Trade Marks and Designs) [2007], involved an applicant who sought to register a number of three-dimensional marks consisting of the appearance of white rectangular washing tablets with coloured designs as Community trade marks. The Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (“OHIM”) concluded that the marks were devoid of any distinctive character.

The applicant submitted nine applications for Community trade marks to the OHIM. The marks were three-dimensional shapes, consisting of thick rectangular white washing tablets with various coloured floral designs. The applications were dismissed. The applicant appealed.

On appeal, the Board of Appeal of the OHIM affirmed the decision not to grant the Community Trade Marks. The Board found that the level of attention paid by the average consumer to the shape and design of the washing tablet was not high. It found that the combination of the shape, colours and design in respect of each tablet was a variation of the normal presentation of the product concerned. It held that it was not suitable for identifying that product as coming from a specific company. On that basis, it decided that that the marks applied for were devoid of any distinctive character.

The applicant brought actions in an attempt to annul the decision in the Court of First Instance of the European Communities. The applicant submitted that the goods were aimed at consumers doing their daily shopping, who would pay a high level of attention to the shape and size of the washing tablets. It also submitted that the Board of Appeal had erred in its assessment of the overall impression produced by the combination of the shape, colours and design of each mark.

Despite these arguments, the actions were dismissed.

According to established authority, the criteria for assessing the distinctive character of three-dimensional trade marks consisting of the appearance of the product itself were no different from those applicable to other categories of trade mark. Even so, when those criteria were applied, consideration should be made of the fact that the perception of the average consumer was not necessarily the same in relation to a three-dimensional mark consisting of the appearance of the product itself as it was in relation to a word or figurative mark consisting of a sign which was independent of the appearance of the products it denoted.

Average consumers were not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element. It was therefore decided that it could prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark.

In those circumstances, only a mark which departed significantly from the norm fulfilled its essential function of indicating origin was not devoid of any distinctive character.

In this case, the evidence presented by the applicant was not sufficient to establish that the consumer concerned paid particular attention to the appearance of the washing tablet or that the consumer was accustomed to perceiving it as an indication of its commercial origin.

The Board of Appeal had established to the requisite legal standard that each of the marks applied for had failed, as regards the overall impression produced by the combination of the shape, colours and design of the tablets in question, to enable the average consumer concerned to identify the trade origin of the goods in question at the time of purchase.

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© RT COOPERS, 2007. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.

 


 

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