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#GLPoint special issue for China IP Magazine

3D marks: a new case for the distinctiveness of vodka bottles

A step forward for three-dimensional marks registrability

The legal requirements to protect a shape mark

According to Article 3(3)(c) EUTMR, a shape mark is a trade mark consisting of, or extending to, a three-dimensional shape, including containers, packaging, the product itself or its appearance.

Article 7(1)(b) EUTMR does not distinguish between different categories of trade marks in determining whether a trade mark is capable of distinguishing the goods or services of one undertaking from those of other undertakings.

In applying this uniform legal standard to different trademarks and categories of trade marks, a distinction must be made depending on consumer perception and market conditions.

For signs consisting of the shape of the goods themselves, no stricter criteria apply than for other marks, but it may be more difficult to come to a finding of distinctiveness, as such marks will not necessarily be perceived by the relevant public in the same way as a word or figurative mark.

In the assessment of the distinctiveness of a shape itself, therefore, the basic test is whether the shape is so materially different from basic, common or expected shapes that it enables a consumer to identify the goods just by their shape and to buy the same item again if he or she has had positive experiences with the goods.

The line of decision-making of the European Offices and Courts on the issue of the registrability of 3D marks consisting of the shape of a bottle

In the case law of the European Court of Justice, the more the shape of which registration as a trademark is sought resembles the shape that the concerned product is likely to take, the more likely it is that this shape is devoid of distinctiveness.

On this premise, for example, the following trademarks were denied registration:

On the contrary, the following bottle shapes were considered sufficiently distinctive:

The recent decision on the distinctiveness of the bottle of vodka in the name of Absolut Company Aktiebolag

On June 3, 2022, the Fifth Board of Appeal of the EUIPO recognized the sufficient distinctiveness and consequent registrability – pursuant to Article 4 of the EU Trademark Regulation No. 1001/2017 – of the three-dimensional mark of the vodka bottle most recently minted by Absolut as for the following reproduction:

The mark consists of a three-dimensional reproduction of a rectangular vodka bottle, characterized by some copper-colored elements (closure, neck, back portion and front label frame).

The registration process was not straightforward: the trademark application was indeed initially rejected for its lack of distinctiveness.

The sign – the Examiner originally stated – would not be capable of attracting the attention of consumers because it was already commonly used in the field of alcoholic beverage packaging, and therefore incapable of rising to the status of an indicator of commercial origin.

Absolut then appealed against that first judgment, arguing over the sufficient degree of distinctiveness of the sign deriving from the not trivial nor common combination of the various elements composing the bottle.

Moreover, Absolut argued, in the trade of vodka bottles (contrary to gin bottles) packaging usually has repetitive features including cylindrical shapes, narrow necks and the use of a limited range of colors (silver, blue, and white).

On this assumption, it would just be the aesthetics of the bottle (and in particular the chosen color-scheme of copper and gold) that would allow consumers, by capturing their attention, to identify the entrepreneurial origin of the shape.

The Board of Appeal then overturned the decision of the first Examiner, affirming the existence of a sufficient degree of distinctiveness of the mark by asserting that where a sign departs significantly from the norm or customs of the concerned sector due to the existence of elements that can have a strong impact on consumers' perception of the object, allowing them to perceive this particular combination of elements as an indication of origin rather than merely a decoration of the packaging, here then the same can perform the function of a mark.

And this, even apart from providing evidence of acquired distinctiveness through use of the mark in the market and thus apart from any notoriety of the sign.


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