Bottle shape mark decision may be a breakthrough

In Nestlé Waters France v Office for Harmonization in the Internal Market, the European Court of First Instance has overturned a decision to refuse the registration of the three-dimensional shape of a bottle as a Community trademark.

Nestlé Waters France applied to register in Class 32 of the Nice Classification a Community trademark for a three-dimensional bottle shape. The registration application included a detailed description of the elements making up the shape. It stated that:

• the main section of the bottle featured, at its base, a recess, in the shape of a slightly truncated cone with, in its flat section, a stylized star in relief;
  
  
• the lower part of the main section, which was nearly cylindrical from bottom to top, featured a series of wavy grooves;
  
  
• the upper part of the main section, which was slightly smaller in diameter and bobbin-shaped, included spiralling grooves forming lozenge shapes when seen through the bottle; and
  
  
• the top section, in the shape of a slightly truncated cone, ended in a cylindrical neck with a blue cap.

The OHIM and the Board of Appeal rejected the application on the grounds that the trademark was devoid of any distinctive character because the general shape of the bottle was classic and its decoration was of a standard type. Nestlé appealed.

The Court of First Instance upheld the appeal and allowed the registration of the bottle shape. It found that the combination of the elements making up the shape was specific and could not be regarded as commonplace in the market. Moreover, the combination of elements formed a design that was striking and memorable. The court added that the overall appearance of the shape could enable consumers to distinguish the goods concerned from those of other companies. Thus, even though the shape was made up of elements that perhaps individually were devoid of any distinctive character, it could be registered as those elements had been combined in such a way as to give the shape the required level of distinctiveness.

The decision is seemingly at odds with the OHIM's strict examination practice for three-dimensional marks. It also highlights the importance of including a highly detailed description in an application to register a three-dimensional mark. It seems clear that the detail in Nestlé's description of the mark spurred the court into making a full analysis of the ornamentation on the bottle.

It will be interesting to see to what extent the monopoly on a trademark registration for a bottle shape may be defended. In this case, the bottle shape was regarded as having the minimum degree of distinctiveness required. The OHIM has previously indicated that, where a trademark has limited distinctiveness, a relatively high degree of similarity between it and a conflicting sign is necessary in order to conclude that there is a likelihood of confusion.

Eric Schal and Jean-Philippe Bresson, Inlex Conseil, Paris