ECJ: cylindrical bottle mark is "perfect" but not distinctive

European Union

In Voss of Norway ASA v Office for Harmonisation in the Internal Market (OHIM) (Case C-445/13 P, May 7 2015), the Court of Justice of the European Union (ECJ) has confirmed that Voss of Norway ASA’s three-dimensional (3D) Community trademark (No 3156163, reproduced below ) for goods in Classes 32 ("beers; non-alcoholic drinks, water") and 33 ("alcoholic beverages (except beers)") of the Nice Classification was invalid because it is devoid of distinctive character.

Voss is a Norwegian brand of bottled water sold in packaging identical to the mark with the VOSS brand superimposed:

Voss’ mark portrays a 3D transparent cylindrical bottle with a non-transparent cap of the same diameter as the bottle itself, described by the Board of Appeal of OHIM and the General Court as the “perfect cylinder shape”.

Nordic Spirit is a Swedish manufacturer and distributor of vodka under the mark DQ VODKA sold in the packaging shown below:

The packaging ‘conflict’ is self-evident. Nordic Spirit applied for a declaration of invalidity of the mark relying on multiple absolute grounds, including that the mark is devoid of any distinctive character pursuant to Article 7(1)(b) of the Community Trademark Regulation (207/2009).

The Cancellation Division of OHIM rejected the application for a declaration of invalidity. Nordic Spirit appealed the Cancellation Division’s decision and the Board of Appeal sided with Nordic Spirit, finding that the mark was invalid in its entirety. Voss appealed to the General Court, which upheld the decision of the Board of Appeal and dismissed Voss’ action.

Voss appealed to the ECJ, putting forward six grounds of appeal. The International Trademark Association was granted leave to intervene and filed an amicus brief in support of Voss’ appeal, but to no avail.

The appeal was reject on all counts. The ECJ did little more than agreeing with the findings of the General Court and reiterating the key principles on the interpretation of Article 7(1)(b) in relation to 3D marks, in particular:  

  • the criteria for assessing the distinctiveness of shape marks are not different from those applicable to other categories of marks;
  • distinctiveness is assessed by reference to the goods and services in respect of which registration is sought and by reference to the perception of the relevant public;
  • it could prove more difficult to establish the distinctive character of a shape mark because consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element;
  • the more closely a shape resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of distinctive character. In fact, “only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character”; and
  • one must first define the norms and customs of the sector of goods in respect of which a mark is applied for or registered and assess whether the mark ‘deviates’ significantly from those norms and customs or if it is simply a ‘variant’ of a common shape.

The General Court had identified the relevant norms and customs as those of the alcoholic and non-alcoholic beverages sector. In comparing the features of the mark against those norms, the General Court had found that the mark was “somewhat original”, but it did not constitute a significant departure.

In particular, the General Court had found that “the vast majority of bottles available on the market have a cylindrical section” and “many bottles are closed with a cap made of a different material and colour from the body of the bottle”. Also, the fact that the diameter of the cap was the same as that of the bottle was a mere variant on a customary shape. Therefore, it followed that the shape portrayed by the mark would not have permitted a reasonably well informed and reasonably observant and circumspect average consumer to distinguish Voss’ products from those of other undertakings.

The ECJ noted that it was not its prerogative to disturb the General Court’s assessment above, as it was of a factual nature and an appeal to the ECJ lies on points of law only. The appraisal of facts and evidence by the General Court could only be appealed where the facts or evidence are distorted. There was no evidence before the ECJ that this had happened. Due to the court’s inability to revisit the appraisal of the facts, the outcome of the decision does not come as a surprise, as the General Court diligently went through all the steps of the test and ticked all the relevant boxes.

However, the General Court’s conclusion that the mark constitutes only a mere variation of the norm of the sector still remains at odds with General Court’s own findings that:

  1. the shape is "somewhat original" and “one of a kind”;
  2. the vast majority of bottles narrow at the top to form the neck; and
  3. the Board of Appeal had not established that there were other, similar bottles on the market which were also registered.

On the basis of his imperfect recollection of supermarket aisles displaying bottled water, the author cannot think of any other brand of water using a ‘perfect cylinder’ bottle. In fact, in the author's view, the mark is possibly more reminiscent of the packaging of beauty products, perfume bottles, or even perhaps laboratory equipment (eg, a test tube or a vial).

Cam Gatta, Redd Solicitors LLP

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