ECJ rejects another bottle shape mark application

In Develey Holding GmbH & Co Beteiligungs KG v Office for Harmonization in the Internal Market (OHIM) (C-238/06 P), the European Court of Justice (ECJ) has upheld decisions by the Second Board of Appeal of OHIM and the Court of First Instance (CFI) refusing registration of a three-dimensional mark consisting of the shape of a bottle.

Develey Holding GmbH & Co Beteiligungs KG filed an application for the registration of a three-dimensional sign as a Community trademark for goods in Classes 29, 30 and 32 of the Nice Classification. The examiner of OHIM, the board of appeal and the CFI considered that the trademark was devoid of any distinctive character (for further details, see "Bottle shape mark application rejected"). The ECJ affirmed the decision of the CFI and added several considerations which are of interest to trademark owners.

First, Develey raised several arguments under the Agreement on Trade-Related Aspects of Intellectual Property Rights and the Paris Convention for the Protection of Industrial Property. The ECJ rejected these arguments by referring to the final recital of the preamble to Council Decision 94/800, whereby the Agreement establishing the World Trade Organization, including the annexes thereto, is not susceptible to being directly invoked in Community or national courts. The ECJ also stated that the European Union is not a party to the Paris Convention. Provisions of these treaties will therefore apply in future Community trademark cases only if and to the extent that they have been implemented by EU law either by reference or through identical or similar legal provisions.

Moreover, Develey claimed that the lower instances had failed to apply the EU rules on the burden of proof - that is, the burden to prove that the trademark was devoid of distinctive character rested on the OHIM. On the contrary, the ECJ held that Develey had to show that the trademark applied for had either an intrinsic distinctive character or a distinctive character acquired by usage.

Further, Develey alleged that because its trademark had been registered by the German Patent and Trademark Office, the refusal to register it as a Community trademark contradicted the findings of the German authority. The ECJ recalled that the Community trademark regime is an autonomous system which is independent of the national trademark systems and the OHIM is under no obligation to follow the assessment of a national IP office.

With regard to the degree of distinctiveness of the mark, the ECJ held that the criteria for assessing the distinctive character of a three-dimensional trademark consisting of the appearance of the product itself are no different from those applicable to other types of trademarks. Therefore, only marks which depart significantly from the norm or customs of the sector should be regarded as distinctive. Although the CFI recognized that one specific feature of the mark in question differed from the usual shape of a bottle, the ECJ agreed that this feature alone was insufficient to influence the overall impression given by the trademark.

Finally, the ECJ had to decide whether in examining the distinctiveness of the trademark in respect of the goods and services covered, the CFI had to justify its findings in respect of the individual goods and services. The ECJ concluded that where the same grounds of refusal apply to a category of goods or services, a general reasoning for all the goods or services will be sufficient. This will undoubtedly simplify the work of examiners, but may lead to inconsistent results.

Arguably, this decision makes it even more difficult for trademark applicants to protect a specific bottle shape.

Hans Georg Zeiner, Zeiner & Zeiner, Vienna