ECJ pours cold water on dishwasher tablet shape marks

In Henkel KGaA v Office for Harmonization in the Internal Market (OHIM), the European Court of Justice (ECJ) has refused to register as Community trademarks the three-dimensional shapes of two dishwasher tablets because they were devoid of any distinctive character pursuant to Article 7(1)(b) of the Community Trademark Regulation.

Henkel KGaA, a company based in Germany, applied to register the shape of two rectangular, coloured dishwasher tablets as three-dimensional Community trademarks with the OHIM. The applications were rejected by both the OHIM’s Board of Appeal and the European Court of First Instance (CFI) on the grounds that the marks were devoid of any distinctive character. Henkel appealed to the ECJ.

The ECJ dismissed the appeal and upheld the CFI’s decision. It noted that both a product’s shape and its colour are capable of constituting a Community trademark. However, it stressed that the fact that a sign is, on a general level, capable of constituting a trademark does not mean that the sign necessarily has distinctive character in relation to a specific product or service. The assessment of distinctive character has to be made by reference to (i) the goods or services covered by the application, and (ii) the relevant public’s perception of the sign in relation to these goods and services.

The criteria for assessing the distinctive character of a three-dimensional mark made up of the shape of the product covered by the registration are no different from those applicable to other categories of trademarks. However, the ECJ stated that the more closely the shape for which registration is sought resembles the shape of the product in question, the greater the likelihood of the shape being devoid of any distinctive character. Only a trademark that departs significantly from the norm or customs of the industry and thereby fulfils its essential function of indicating origin, is not devoid of any distinctive character for the purposes of Article 7(1)(b) of the Community Trademark Regulation. In the case at hand, The ECJ stated that Henkel’s shape marks did not indicate origin and were devoid of any distinctive character.

The ECJ also dismissed Henkel’s other arguments that the CFI’s finding regarding the average consumer’s level of attention were incorrect. The CFI had held that the level of attention given by the average consumer to the shape and colours of washing machine and dishwasher tablets is not high and that the relevant public is used to seeing different colour features in detergent preparations. The ECJ ruled that this issue was of a factual nature and therefore not subject to review by the ECJ.

Lastly, the court upheld the CFI’s reasoning that it is not necessary to decide on the relevant date for the assessment of distinctive character since this assessment is not affected by the amount of similar tablets on the market.

For a background discussion of this case, see Advocate general against protecting dishwasher tablets. For a discussion of a similar finding by the ECJ in another dishwasher tablet case, see Detergent tablet shape mark applications are a wash out.

Reinhard Schanda and Rainer Allitsch, Sattler & Schanda Rechtsanwälte, Vienna