Cassegrain fails to bag shape trademark

European Union

In Jean Cassegrain SAS v Office for Harmonization in the Internal Market (OHIM) (Case T-73/06, October 21 2008), the Court of First Instance (CFI) has upheld a decision of the Second Board of Appeal of OHIM in which the latter had held that a figurative mark consisting of the shape of a bag was devoid of any distinctive character and, therefore, could not be registered as a Community trademark.

In December 2003, Jean Cassegrain SAS - the company behind the Longchamp bags and accessories - applied for the registration of a figurative mark for goods in Class 18 of the Nice Classification (bags). The mark consisted exclusively of the representation of the shape of a bag, with no verbal, ornamental or colour element added.
In April 2005 an OHIM examiner rejected the application on the grounds that:
  • the mark was devoid of distinctive character; and
  • Cassegrain had failed to establish that the mark had become distinctive in consequence of the use that had been made of it.
Cassegrain appealed. It did not seek to rely on Article 7(3) of the Community Trademark Regulation (40/94) (acquired distinctiveness). The Second Board of Appeal dismissed the appeal in December 2005, holding that the characteristics of the sign in question, whether considered individually or together, did not distinguish it from other bags on the market. The board also refused to take into account the possibility of the mark being used on a multitude of products because the application covered only bags; in any case, this would not change the overall impression created by the sign. Cassegrain appealed to the CFI.
In reaching its decision, the CFI clarified the position in relation to the appropriate method and the relevant criteria for assessing whether a figurative mark consisting of the shape of the goods to which it relates has distinctive character.
First, Cassegrain challenged the case law of the Board of Appeal and the CFI as indicating an ideological opposition to non-traditional marks in that:
  • it is based on an assumption that it is more difficult for the public to recognize goods as those of one undertaking based on the shape or representation of those goods; and
  • it requires that a mark consisting of the shape of manufactured goods should be immediately perceived as a trademark in order to be capable of registration. 
Cassegrain requested that the CFI appoint an expert to report to the court whether and how the shape of goods or a representation of their outline could have an impact on the public’s memory as an indication of the goods’ commercial origin. The CFI addressed this point by analogy with three-dimensional trademarks and based its reasoning on the relevant case law. It highlighted that a figurative mark consisting solely of the shape of the goods to which it relates, like a three-dimensional trademark, does not constitute a sign independent from the appearance of the goods to which it relates. The CFI held that, in the absence of a graphic or textual element, the average consumer does not usually rely on the shape of goods or that of their packaging as an indication of commercial origin. 
However, in order to be capable of registration as a Community trademark, a mark - whatever its form and nature - must enable consumers to identify the goods as those of a specific undertaking. Accordingly, in order to satisfy the 'distinctive character' test, a mark that does not constitute a sign independent from the appearance of the goods to which it relates (eg, a figurative mark consisting of the shape of the relevant goods with no added graphic or textual element) must differ significantly from what is standard or usual in the relevant trade. The CFI thus decided against commissioning the expert report requested by Cassegrain.
In addition, Cassegrain argued that the mark was not necessarily a mere representation of a bag, as there are many different bag designs and the sign in question had characteristics that made it easily recognizable by the public. The CFI disagreed and held that the sign in question, whether considered as a whole or broken down into its various components, was not distinctive and did not distinguish the mark from the usual representation of a bag. In addition, the fact that the bag’s design had been held to be original in the context of copyright and design rights had no bearing on whether it had a distinctive character for the purposes of Article 7(1)(b) of the regulation.
Cassegrain also sought to rely on DaimlerChrysler v OHIM (Case T-128/01), as it was intended that the mark would not only be incorporated into bags, but would also be affixed to all its goods, making it all the more obvious as an indication of the commercial origin of the goods. The CFI distinguished Cassegrain’s mark, which evoked a typical representation of a contemporary bag, from the mark in DaimlerChrysler, which was not devoid of distinctive character. It held that the distinctive character of a mark must be assessed independently of marketing concepts and steps implemented or envisaged by the applicant.
Further, Cassegrain argued that the assessment of the distinctive character of the mark should have taken into account the fact that the sign had been incorporated into over 6 million bags since its creation in 1993. The CFI highlighted that Cassegrain had elected not to rely on the provisions of Article 7(3) before the Board of Appeal. The very existence of Article 7(3) made it clear that, under Article 7(1)(b), the question was whether the mark was distinctive ab initio. Any distinctive character that it might have acquired through commercial use was irrelevant for the purposes of that provision.
Finally, Cassegrain sought to strengthen its case by referring to decisions by French and Belgian courts; it also sought to rely on Article 6 of the Paris Convention for the Protection of Industrial Property. The CFI reasserted the autonomy of the legal regime for Community trademarks in relation to non-EU legislation, registrations and decisions; although these might in some cases inform decisions in relation to Community trademarks, they were not relevant and/or applicable per se.
It is unclear why Cassegrain did not invoke Article 7(3) in view of the high level of sales figures which it claimed. The CFI’s decision in this case seems to indicate that this would be the only way for a figurative mark consisting of the typical shape of the goods to which it relates to acquire distinctive character and become capable of registration as a Community trademark.
Chris McLeod and Marine Baudriller, Hammonds LLP, London

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