Detergent tablet shape mark applications are a wash out

In Procter & Gamble Company v Office for Harmonization in the Internal Market (OHIM), the European Court of Justice (ECJ) has upheld five decisions of the European Court of First Instance (CFI) to refuse registration of Procter & Gamble's three-dimensional shape marks for washing machine or dishwasher tablets on the basis that they were devoid of distinctive character.

Procter & Gamble filed five applications with the OHIM in October 1998 for the registration of three-dimensional shapes of dishwasher and washing machine tablets. All the tablets were square with rounded corners. Their colours were as follows:

• a white layer and a pale green layer;
  
  
• a layer of white and green speckles, and a pale green layer;
  
  
• white with yellow and blue speckles;
  
  
• white with blue speckles; and
  
  
• white with green and blue speckles.

The OHIM refused the applications on the grounds that they were devoid of any distinctive character pursuant to Article 7(1)(b) of the Community Trademark Regulation. These decisions were upheld by the OHIM Board of Appeal and the CFI. Procter & Gamble lodged appeals to the ECJ, which considered them together.

The ECJ upheld the decisions. It confirmed that a sign consisting of the three-dimensional shape of a tablet for washing machines or dishwashers may, in principle, constitute a trademark. However, it held that this does not mean that the sign necessarily has a distinctive character for the purposes of Article 7(1)(b).

The ECJ followed the CFI's opinion in finding that the first test for assessing the distinctive character of marks consisting of the three-dimensional shape of the products to which they apply is the same as for any other category of trademarks. This test is whether the mark applied for will enable the consumers targeted to distinguish the products concerned from those having a different trade origin when they come to select a product for purchase. However, the ECJ found that the average consumer tends not to make assumptions about the origin of products on the basis of their shape or the shape of their packaging. Thus, it concluded that only a trademark that departs significantly from the form used in the relevant sector of trade is not devoid of any distinctive character.

The CFI had held that:

• a square is one of the basic geometrical shapes and is therefore an obvious shape for a tablet;
  
  
• the slightly rounded corners were dictated by practical considerations; and
  
  
• the colours were suggestive of certain qualities of the detergents and were commonly used in the trade.

The ECJ upheld these findings and thus concluded that the shapes could not be registered.

For a discussion of Advocate General Colomer's opinion in this case, see Advocate general against protecting dishwasher tablets.

Carsten Albrecht, Lovells, Hamburg