Cheese shape mark off the menu through lack of distinctiveness

The Court of Appeal of England and Wales has ruled that the unusual shape of a cheese was not sufficient for the sign to be considered inherently distinctive to allow registration as a trademark. The applicant, Bongrain SA, was also unable to establish that the shape had acquired distinctiveness through use.

The application was for the 'six-lobed' or 'flower' shape of a French cheese. The application was refused by the Trademarks Registry, the High Court and the Court of Appeal, on substantially the same grounds. In the Court of Appeal, Lord Justice Jacob took the opportunity to review the relevant European Court of Justice (ECJ) case law.

The case hinged on the UK equivalent to Article 3(1)(b) of the Community Trademark Directive, which denies registration to "trademarks which are devoid of any distinctive character". Bongrain argued that a very fancy shape, departing significantly from the norm, is necessarily enough to confer an inherent distinctive character. Jacob rejected this argument, stating that "I do not accept that just because a shape is unusual for the kind of goods concerned, the public will automatically take it as denoting trade origin, as being the badge of the maker".

Jacob emphasized, following the ECJ's reasoning in Henkel (see ECJ pours cold water on dishwasher tablet shape marks), that the legal test for "distinctive character" is in principle the same for all types of mark. He next set out the legal test from the ECJ ruling in Linde (see Law on three-dimensional marks knocked into shape by ECJ):

"For a mark to possess distinctive character … it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking … In addition, a trademark's distinctiveness must be assessed by reference to, first, the goods or services in respect of which registration is sought and, second, the perception of the relevant persons, namely the consumers of the goods or services."

The point, Jacob said, is that the public perception of different types of mark may differ. He referred to a spectrum of types of mark in relation to public perception. At one end are invented words and fancy devices, which are by their very nature likely to be taken as put on the goods to tell the consumer who made them. At the other end is the shape of the goods themselves, which is unlikely to convey such a message, since the public are not used to the mere shape of goods conveying trademark significance. Even the shape of a container, Jacob said, is more likely to be perceived as indicating that the contents are made by a particular manufacturer.

Jacob accepted that a consumer might recognize the shape when looking for a cheese that he had bought before, but stated that it could not, without more, be said that he would regard the shape alone as giving him a guarantee of origin. The shape will only be accepted as having become distinctive in fact, and therefore registerable pursuant to Article 3(3) of the directive, once it can be shown that, following use, the average consumer has come to say: "by this shape I know I can rely upon getting goods from the same maker as before".

Jacob has made clear that it is unlikely that a mark that consists of the shape of a product itself will ever be considered inherently distinctive. It will be possible to register such a mark if it can be demonstrated that it has, through use, acquired distinctiveness. For this, it will be necessary to show that customers regard the shape alone as providing a guarantee of origin. What remains unclear is just what evidence, in practice, an applicant can put forward to establish this, particularly given that shape marks are almost always used in conjunction with a word or device mark.

Mark Lawry, DLA Piper Rudnick Gray Cary UK LLP, London