L'EAU D'ISSEY perfume packaging held to be distinctive

The Estonian Board of Appeal has overturned a decision to refuse the registration as a trademark of the shape of packaging for a perfume sold under the mark L'EAU D'ISSEY (Case 514-o).

Beauté Prestige International SA, a division of Japanese cosmetics manufacturer Shiseido, applied to register the flattened lozenge shape of the packaging for its perfume as a trademark for goods in Class 3 of the Nice Classification. The PO rejected registration on the grounds that the packaging lacked distinctive character and was commonly used in the trade. It stated that although it had allowed the registration of commonly used packaging for other products in previous decisions, the flattened lozenge shape and unusual placement of a label were not distinctive enough to save the registration on this occasion. Beauté Prestige appealed.

The Board of Appeal upheld the appeal and remanded the case to the PO. It stated that the PO had made a number of errors of procedure when issuing its decision. First, the PO had issued the notice of refusal before it had informed Beauté Prestige of one of the grounds for refusal, namely the finding that the mark lacked distinctive character. Second, the PO had added this finding to its decision after the expiry of the 18-month examination deadline set out in the Madrid Protocol. It had also failed to notify the World Intellectual Property Organization of this fact, which constituted a violation of Article 5(2) of the protocol.

The board also held that the flattened lozenge shape and unusual placement of the label were distinctive features. It noted that the PO had failed to provide evidence that this particular form of packaging was commonly used in the trade.

PO's decision, said the board, was inconsistent with its previous practice as it had allowed a number of other commonly used types of packaging to be registered. This violated the principle of equal treatment.

Almar Sehver, AAA Legal Services, Tallinn