Community Trade Mark - Invalidity Action

Trade Marks- Community Trade Marks – Invalidity Proceedings


In the case of Voss of Norway ASA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [2015], the Court of Justice of the European Union (Sixth Chamber) dismissed the appeal brought by Voss of Norway ASA (Voss).


In December 2004, the applicant obtained a Community trade mark registration for a three-dimensional Community trade mark in respect of goods in Classes 32: Beers; non-alcoholic drinks, water and 33: Alcoholic beverages (except beers). In July 2008, the intervener company applied for a declaration that the trade mark should be declared invalid.


The declaration of invalidity was rejected by the Cancellation Division of OHIM in its entirety. It ruled that the shape of the contested trade mark was not 'common' on the beverages market and that, because of the contrast between the transparent body and the cap, it departed significantly from existing bottles and could, for that reason, function as a trade mark.


The intervener then appealed to OHIM. The decision of the Cancellation Division was annulled by the First Board of Appeal of OHIM (the Board) and it upheld the application for a declaration of invalidity:


  • Consumers first observe the bottles containing the goods as a means of packaging, they would look at the label on the bottles to identify the origin of the product and to distinguish it from others.


  • The assertions by the intervener that the average consumer was capable of perceiving the shape of the packaging of the goods concerned as an indication of their commercial origin, in so far as that shape presented characteristics which were sufficient to hold the consumer’s attention, were not supported by any evidence.


  • The shape of the bottle did not deviate significantly from the shape of other containers used for alcoholic or non-alcoholic beverages within the European Union and was a mere variant thereof.


  • The applicant commenced proceedings before the General Court of the European Union seeking annulment of the contested decision.

Following the dismissal, the applicant appealed to the Court of Justice of the European Union.

In support of its action, the applicant alleged that the General Court:


  • Had not examined the allegation regarding the distinctive character of the contested trade mark, although that mark had been registered and enjoyed a presumption of validity;


  • the judgment under appeal had shifted the burden of proof, “which lay exclusively with the intervener in its capacity as the party which had brought invalidity proceedings in respect of the contested trade mark, by imposing on the applicant the obligation to prove the distinctiveness of that mark notwithstanding the absence of any evidence provided by the intervener in support of the alleged non-distinctiveness of the mark”;


  • Had infringed art 7(1)(b) of the regulation by ruling that the shape of the bottle at issue was devoid of any distinctive character;


  • Had infringed art 7(1)(b) of the regulation by evaluating, for the purposes of assessing the distinctive character of the contested trade mark, each of the components of the three-dimensional sign at issue separately without, however, assessing that sign as a whole;


  • The Board, had distorted the evidence in the file by comparing the perfect cylinder of the three-dimensional sign to a two-dimensional 'cylindrical section' with the result that its assessment relating to the norms and customs of the relevant sector was erroneous in its entirety; and


  • Had held that, since the contested trade mark was made up of components which were individually devoid of distinctive character, it lacked distinctive character as a whole. According to the applicant, such reasoning had the effect of making it impossible for the packaging of a product, both as a whole and as a combination of components, to be accorded distinctive character, which was contrary to the purpose of the Regulation.

The appeal was dismissed. 



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© RT COOPERS, 2015. 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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