Adjudicator considers registrability of 2D depiction of 3D bottle

The registrability of three-dimensional (3D) marks is among the most vexing of all trademark matters and the situation is the same under Israeli practice. Particularly challenging is the circumstance in which the mark at issue is a two-dimensional (2D) depiction of a 3D object. That was the question that was raised in the matter of Application No 184325, filed The Coca-Cola Company in Class 32 of the Nice Classification, in the form of the depiction of a bottle, as follows:

The application, which was supported by an affidavit, was rejected by the examiner, and the applicant then requested that the matter be transferred to the commissioner for a decision based on the materials in the application file. 

Several months after the filing of the request, the applicant submitted a 3D specimen of the bottle depicted in the application. The applicant argued that the mark is inherently distinctive, non-functional and that, in any event, it had acquired a secondary meaning. The applicant also argued that the mark has been registered in various jurisdictions, including as a Community trademark. Based on this, the applicant stated, the refusal should be removed and the application should be allowed.

The adjudicator noted that 3D marks can be divided into three categories:

• marks that consist of the form of the product itself;
• marks that consist of the form of the packaging; and
• marks that are wholly unrelated to the product.

The adjudicator then considered the proper test for determining the registrability of a 3D mark under Israeli law. In particular, the adjudicator addressed the issue posed by the application, namely, registrability of a 2D depiction of a 3D bottle, noting that "the distinction between two-dimensional and three-dimensional marks is not always simple and clear-cut". 

She considered a recent decision of the registry (Application Nos 216872-4, filed by The Procter & Gamble Company), which made reference to the position taken by the Office for Harmonisation in the Internal Market in Section 7.5.2 of the Manual Concerning Proceedings before the Office for Harmonisation in the Internal Market (Trademarks and Designs), which was quoted in the decision as follows:

"Figurative marks showing a graphic representation of a naturalistic reproduction of the goods themselves are only registrable under the same conditions as if they were filed as a three-dimensional trademark (CFI, T-30/00).

In this regard, the case-law developed for three-dimensional marks which consist of the reproduction of the shape of the product itself is also relevant for figurative marks consisting of two-dimensional representations of the product or elements of it."

The adjudicator also pointed to Circular 61, which states that, "should it be decided that the mark is registrable, registration will be conditioned on adding a notice that makes clear that the mark is three-dimensional".

In deciding on the registrability of the mark at issue, the adjudicator focused on whether the mark had acquired secondary meaning. In that connection, she noted: 

"I will not discuss inherent distinctiveness, even though it is clear that, when the inherent distinctiveness of the mark is weaker, it makes it more difficult for the mark to acquire secondary meaning."

Based on this, the adjudicator noted that the form of the bottle departed from what is common in the field of soft drinks, with the result that the public had come to identify it. However, that alone was not enough; the applicant also needed to show that the public had come to view the depiction of the bottle as functioning as a trademark. In particular, attention was drawn to the manner of use of the mark and the extent to which the mark was used in conjunction with other marks. The adjudicator focused on the quantity of sales of the product and the extent of advertising. 

Based on this evidence, the adjudicator concluded that the mark had acquired secondary meaning and therefore accepted the application, subject to the notice requirements of Circular 61.

Neil Wilkof, Eyal Bressler and Company, Ramat-Gan