Frischpack cheesed off following packaging mark refusal

In Frischpack GmbH & Co KG v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has upheld a decision to refuse the registration of a three-dimensional Community trademark consisting of packaging for sliced cheese.

Frischpack GmbH & Co KG, a German packaging manufacturer, applied to the OHIM for the registration as a three-dimensional Community trademark of a box for goods within Class 29 of the Nice Classification, corresponding to the following description: "Foodstuffs in sliced form, in particular slices of cheese". The examiner rejected the application on the grounds that the mark was devoid of distinctive character pursuant to Article 7(1)(b) of the Community Trademark Regulation. Frischpack appealed.

The OHIM's Board of Appeal upheld the examiner's decision and dismissed Frischpack's application. The board observed that the average consumer would view the shape claimed as ordinary flat packaging. Moreover, although the mark applied for was the subject of a complex description, only a considerable analytical effort would make it possible to recognize all the characteristics listed in that description. The average consumer would not carry out such a complex and intensive analysis of the mark.

Frischpack applied for the partial annulment of the board's decision in so far as it referred to "cheese slices in large packs, not intended for the final consumer" on the grounds that this packaging was destined solely for a specialized public, accustomed to detecting small differences that distinguish one type of packaging from another. The OHIM contended that this claim was inadmissible since it constituted a change of the subject matter of the proceedings.

The CFI rejected the claim of inadmissibility. It noted that since the subject matter of the proceedings before the board was Frischpack's application for goods in Class 29, Frischpack had not made a change to the subject matter by arguing that the mark had distinctive character for a specialized public. In particular, the CFI observed that as it was for the OHIM to ascertain the relevant public in the course of its examination of the distinctive character of a sign, Frischpack, by challenging the board's definition of the relevant public, was not asking for a ruling on different questions from those brought before the board.

However, the CFI held that the board was right in assessing the distinctive character of the packaging in question by taking account of the presumed expectation of the average consumer. In this respect, the CFI stated that the product contained in the packaging was a staple product, and that it and other products in Class 29 were therefore intended a priori for consumers. It noted that at no time during the administrative proceedings before the OHIM did Frischpack claim that the cheese contained in the packaging covered by the application was intended solely to be sold wholesale to the food trade. As a result, and in the light of the information submitted by Frischpack, the board had (i) reasonably taken the view that the relevant public was the average consumer, and (ii) correctly determined that such a consumer would not view the mark as distinctive. Accordingly, the CFI upheld the decision to refuse registration.

Margherita Barié and Pietro Pouchè, McDermott Will & Emery/Carnelutti Studio Legale Associato, Milan