Henkel's bottle shape mark is distinctive, rules CFI

In Henkel KgaA v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has overturned an earlier decision refusing the registration of the three-dimensional shape of a bottle for cleaning products.

German company Henkel KgaA applied to register the shape mark as a Community trademark with the OHIM. The colours claimed in the application were transparent and white and the goods for which registration was sought were cleaning agents, such as soaps, washing and bleaching agents for laundry in Class 3 of the Nice Classification, and plastic boxes for liquid, gel and paste agents in Class 20.

According to the examiner, the mark was devoid of any distinctive character within the meaning of Article 7(1)(b) of the Community Trademark Regulation and the application was thus rejected. Henkel appealed but the OHIM's Board of Appeal refused the registration on the same grounds.

On appeal to the CFI, Henkel claimed that the court should annul the contested decision. The applicant contended that the container was distinctive and that it intentionally contrasted with the shapes traditionally available for containers of that kind. Regarding the characteristics of the container, Henkel emphasized, among other things:

• its crystal-like and flattened shape;
  
  
• the milky-white colour; and
  
  
• the fact that the stopper of the container formed an integral part of the overall image.

The OHIM responded that the packaging of goods that cannot be distributed in unpackaged form, (such as soaps and cleaning products), is perceived by consumers only as packaging to protect the goods and not as an indicator of the commercial origin of the product, unless the packaging is presented in a manner that attracts the attention of consumers. According to the OHIM, this was not the case with Henkel's proposed registration since the shape and colour of its container were common for containers for cleaning products.

In its findings, the CFI stated that the distinctive character of a mark can be appraised by reference to (i) the goods or services in respect of which the registration is sought, and (ii) the way it is perceived by the relevant public, in this case consumers as a whole. The CFI stated that the market for washing and cleaning products is very competitive, and the parties operating in that market are faced with the technical necessity of packaging and labelling for the marketing of those products. There is therefore considerable incentive for companies to make their products identifiable in order to attract the attention of consumers. Such consumers are, continued the court, quite capable of perceiving the shape of a characteristic package in this market as an indication of commercial origin.

Moreover, the CFI held that it is not appropriate to apply more stringent criteria when assessing the distinctiveness of three-dimensional marks comprising the shape of the goods themselves, or the shape of the packaging of such goods, than those applied to other categories of mark. The CFI added that a sign is greater than the mere sum of its constituent parts and a sign can be distinctive even if the various elements comprising the sign are non-distinctive.

The CFI found that the package possessed certain characteristic elements that distinguished it from other products on the market. Since a minimum degree of distinctiveness is sufficient to render inapplicable the grounds of refusal set out in Article 7(1)(b), the contested OHIM decision was annulled. The fact that the sign was already registered as an international trademark in 11 EU member states was also taken into account.

Fredrik Engfeldt, Jonas Gulliksson Advocates Ltd, Malmo