Shape Trade Marks - Recognition At Last?

Nestlé Waters France v Office for Harmonisation in the Internal Market (Trade Marks & Design) (Case t-305/02) - Court of First Instance -Judges Tilli (President), Mengozzi and Vilaras - 3 December 2003

Background

The registration of shapes as trade marks is an area of law in a state of flux. Lawyers have wondered whether there is anything specific about shape marks that makes them inherently more difficult to register than word marks.

Shape marks exist in two forms, the shape of the goods themselves and the shape of the packaging. Some argue that a higher level of distinctiveness is required for shape marks then for word marks. Moreover, when registration is sought based on distinctiveness acquired by use ¹, it is not sufficient to show that the mark has become 100% distinctive by use, so that the public recognises goods in that shape or having packaging in that shape as being the goods of a particular undertaking, there is an additional requirement to show that the use giving rise to the distinctiveness was use of the shape "as a trade mark".

Nestlé Waters France was formerly Perrier Vittel France. The sign they sought to register consisted of a bottle with a cone-shaped recess at its base, a stylised star in relief on the base, a series of diagonal and horizontal grooves, a cylindrical neck and a blue cap. Registration was sought in Class 32 which covers beverages, not Class 21 which covers bottles. There was no reliance on distinctiveness acquired by use.

The fundamental question was whether the sign had a sufficient level of distinctiveness to avoid the prohibition of marks devoid of any distinctive character ².

The CFI overruled the OHIM Boards of Appeal. They decided the sign was not barred from registration by Article 7 (1) (b) because it had the required level of inherent distinctiveness. In coming to this conclusion, the CFI relied on a number of factors :-

• The goods for which registration was sought were beverages, not bottles. The application was therefore for the shape of the packaging, not the shape of the goods.

• In the bottled water market, the public are used to different manufacturers using the shape of the packaging (the bottle) as a means of distinguishing their product from the products of other manufacturers.

• The wording of Article 7 (1) (b) ("devoid of any distinctive character") means that the level of distinctiveness required is not particularly high.

• There is no special requirement for shape marks. They are not to be assessed by any most stringent test that any other type of mark.

A sign having a number of features should not be analysed into its individual features and rejected if the features individually lack distinctive character. The features must be taken as a whole, and the impression of the sign as a whole on the average consumer must be considered.

At its narrowest, the decision will encourage beverage manufacturers trying to register new bottle shapes. They need to establish two matters by evidence. First, they need to show that the buying public is used to beverage manufacturers using the appearance of the bottles as a badge of origin. Second, they need to show that their design of bottle, viewed as a whole is striking, different and easy to remember and so is apt to perform the function of a trade mark. These considerations probably apply equally to any manufacturer seeking to register the shape of the packaging of his goods.

Other areas are more uncertain. Will the Nestlé decision help register shapes which have become distinctive by use? Does it help with registration of the shape of the goods themselves as opposed to the packaging?

The answer to these questions is "maybe" at best. Although it may help establish the level of distinctiveness that needs to be shown, it cannot answer the question of whether acquired distinctiveness can only be brought about by use which is "trade mark use". In Nestlé v. Unilever ³ (the Viennetta Case), Jacob J. said :-

There has always been a great reluctance in the English courts to look at the shape of a product as part of the get-up, let alone a trade mark. They suspect that to do so would act as a de facto perpetual extension of the design rights or other IP rights that may have protected the product. This decision of the CFI will go very little way to overcome this reluctance.

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