3D bottle shape marks held to be dissimilar
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In Illva Saronno SPA v Beveland SA (Case R 108/2009-4, March 26 2010), the Fourth Board of Appeal of the Office for Harmonization in the Internal Market (OHIM) has held that there was no likelihood of confusion between two three-dimensional (3D) trademarks consisting of rectangular bottles bearing the labels 'Amaretto Di Saronno' and 'Amaretto Real Conti', respectively, for goods in Class 33 of the Nice Classification.
On December 22 2005 Spanish company Beveland SA filed an application for the registration as a Community trademark of a 3D mark consisting of a rectangular bottle with an hexagonal cap. The bottle bore a label with the words ‘Amaretto’ at the top and ‘Real Conti’ at the bottom. The mark covered “alcoholic beverages” in Class 33.
On September 28 2006 Italian company Illva Saronno SPA lodged an opposition against the application based on its earlier international registration for a 3D mark consisting of a rectangular bottle with a large quadrangular cap. The bottle bore a label with various indications, the most significant being ‘Amaretto’ in large uppercase characters and ‘Di Saronno’ in smaller uppercase characters underneath. Illva also cited several national registrations for 3D marks consisting of rectangular bottles, partly with labels, in Class 33.
On November 18 2008 the Opposition Division of OHIM rejected the opposition. The Opposition Division took into account only the earlier international mark, as the other earlier rights had not been substantiated. It found that there was no likelihood of confusion between the parties' marks because:
- the cap of Illva’s bottle was quadrangular, while that of Beveland's bottle was hexagonal;
- the overall appearance of the bottles was different; and
- the wording of the labels was different.
Illva appealed, but the Fourth Board of Appeal of OHIM confirmed the findings of the Opposition Division.
In particular, the board held that the shapes of the bottles at issue were commonly used on the market. Therefore, only the labels and the wording appearing on them could be distinctive. However, as ‘Amaretto’ is a generic word for liqueurs, the word elements ‘Amaretto Di Saronno’ and ‘Amaretto Real Conti’ were not similar. The board concluded that there was no visual similarities between the marks, except "in the absolutely non-distinctive elements of a rectangular-shaped body and the generic term ‘Amaretto’".
The case illustrates the difficulties in enforcing 3D marks consisting of bottle shapes at the EU level. In this respect, on March 4 2010 the General Court held that there was no likelihood of confusion between two 3D marks consisting of bottle shapes with no label (Case T-24/08) (for further details please see "Scope of protection of shape marks clarified").
Owners of 3D marks are thus advised to initiate proceedings in very specific and limited circumstances, and to carry out a detailed analysis of the marks involved.
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris
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