CFI has no appetite for sausage shape mark

In Rotter v Office for Harmonization in the Internal Market (OHIM) (Case T-449/07, May 5 2009), the Court of First Instance (CFI) has upheld a decision of the Second Board of Appeal of OHIM in which the latter had refused to register a three-dimensional mark consisting of a configuration of sausages on the grounds that it lacked distinctiveness.

In March 2005 Thomas Rotter applied with OHIM for the registration of a three-dimensional mark consisting of a pretzel-shaped configuration of sausages for goods and services in Classes 29, 30 and 43 of the Nice Classification.

In August 2006 the examiner rejected the application for the goods in Classes 29 and 30 on the grounds that the mark lacked distinctiveness, but accepted the application for the services in Class 43. In October 2006 Rotter appealed to the Board of Appeal of OHIM, which dismissed the appeal on the grounds that the shape of the mark was common. In addition, it held that the average consumer would not perceive such a presentation of the goods as an indication of their commercial origin. Therefore, the board concluded that the mark was devoid of distinctive character.

In December 2007 Rotter appealed to the CFI. He limited the Class 29 specification to “charcuterie” and the Class 43 specification to “providing of food and drink; temporary accommodation”.

Before the CFI, Rotter raised three main arguments in respect of the distinctive character of the mark under Article 7(1)(b) of the Community Trademark Regulation (40/94):

• the shape applied for differed from the usual presentations of charcuterie products because it consisted of various components separated from one another in the form of a pretzel, and thus constituted a new and original shape;
• consumers would distinguish Rotter's goods from those of other producers due to their unusual presentation in the charcuterie sector; and
• the use of a novel form of presenting charcuterie was in itself a new commercial phenomenon.

The CFI reiterated that under settled case law, a mark’s essential function is to identify the commercial origin of the relevant goods or services. In addition, distinctiveness should be assessed in relation to both the goods and services applied for and the perception of the relevant consumers. In that regard, average consumers are not accustomed to making assumptions as to the origin of the goods based on their shape or that of their packaging in the absence of any graphic or word element. Therefore, it is more difficult to establish distinctiveness for such marks.

The CFI observed that charcuterie was an everyday consumer product intended for the average consumer in the European Union. It also upheld the board’s views that the mark consisted of an arrangement of five linked sausages.

As for Rotter’s argument that the shape possessed distinctive character, the CFI stated that it was common practice in trade to gather sausages together by their ends. Therefore, Rotter's sausages retained their traditional rounded oblong shape. Hence, although the shape applied for constituted an original presentation for charcuterie, the CFI concluded that the average consumer would not associate it with that of a pretzel and would perceive it as no more than a combination of sausages.

The mark was thus refused registration on the grounds that it did not vary from the common presentations of charcuterie products available on the market.

The CFI has again followed and reiterated its own statements in relation to the distinctive character of trademarks, and has made mincemeat of another shape application.

Chris McLeod and Myrsini Feliou, Hammonds LLP, London