3D mark for perfume bottles rejected

The Board of Appeal has upheld a decision of the Estonian Patent Office in which the latter had refused to register a figurative trademark consisting of the shape of a bottle for goods in Class 3 of the Nice Classification (Case 969-o, December 22 2008).
Beauté Prestige International applied to register the shape of a bottle as a trademark for “perfumery goods, essential oils, cosmetics and hair lotions” in Class 3. On December 16 2005 the Patent Office refused to register the trademark.
On February 16 2006 Beauté Prestige appealed the decision, claiming that its trademark was registrable. In particular, Beauté Prestige alleged that the bottle was distinctive due to its colour, angular shape, and transparent top and bottom. According to Beauté Prestige, the transparent part of the bottle is convex and the bottle is coloured in black from the inside. Beauté Prestige argued that the colour black and the technology used for colouring the bottles were unusual. In support of this argument, Beauté Prestige submitted that it had invented and patented the technology.
In addition, Beauté Prestige argued that it had advertised its product in several publications which are available in Estonia. Finally, Beauté Prestige stated that the trademark was registered in France and should thus be examined under Article 6quinquies A(1) of the Paris Convention for the Protection of Industrial Property.
The Patent Office stated that consumers distinguish the origin of goods not through their shape or packaging, but through verbal or graphical elements. The colour and shape of the mark at issue were not sufficiently distinctive to distinguish the goods of Beauté Prestige from those of competitors. According to the office, the colour black is not unusual in relation to perfumery goods, as the same visual effect may be achieved by filling a bottle with coloured liquid. As the mark possessed no distinctive elements, Article 6quinquies A(1) was not applicable.
The Board of Appeal agreed with the reasoning of the office. The board held that the mark at issue did not differ sufficiently from the usual shape of perfume bottles. The average consumer of perfumery goods is used to seeing similar bottles in a wide variety of designs. Therefore, the average consumer would not perceive the bottle at issue as a trademark.
Kärt Laigu, Käosaar & Co, Tallinn

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