Opaque glass design mark not distinctive

In Glaverbel SA v Office for Harmonization in the Internal Market (OHIM), the European Court of Justice (ECJ) has upheld the OHIM's decision to refuse the registration of a design applied to the surface of glass products as a Community trademark.

Glaverbel SA, the European branch of Asahi Glass (Japan) Co Ltd, applied to the OHIM to register as a Community trademark a design "applied to the surface of the goods", which are primarily glass products for buildings and for the manufacture of sanitary installations. The design consists substantially of a grained pattern that produces an opaque glass as used for separating a shower from the rest of a bathroom.

An examiner at the OHIM refused the application on the grounds that the mark was not distinctive within the meaning of Article 7(1)(b) of the Community Trademark Regulation.

On appeal, the First Board of Appeal of the OHIM upheld the examiner's refusal to register the mark, stating that the relevant public would perceive the design merely as one of the functional appearances of opaque glass. Glaverbel appealed to the Court of First Instance (CFI).

The CFI agreed that the design lacked inherent distinctiveness. It also emphasized the following points:

• While the design was made up of countless tiny strokes to the surface of a plate of glass, it formed part of the appearance of the product itself.
  
  
• The average consumer may be able to memorize complex signs but does so only on the basis of individual memorable features that he perceives as indicating the trade origin of the goods.
  
  
• The design applied for would be perceived primarily as a technical means of rendering the glass opaque.

In its appeal to the ECJ, Glaverbel argued that the CFI wrongly stated that the relevant public was accustomed to perceiving word or figurative marks as instantly identifying the trade origin of goods while this was not the case for the design in question. It argued that this interpretation would result in attributing a higher degree of distinctiveness to word or figurative marks than to other types of marks.

The ECJ dismissed the appeal and upheld the decision to refuse registration. It ruled that the findings in the CFI's judgment were consistent with case law that states that the criteria for assessing distinctiveness are the same for all types of trademarks. It noted that the relevant public's perception, however, is not necessarily the same in relation to each of these categories. Citing Henkel KGaA v OHIM and Procter & Gamble Company v OHIM (see ECJ pours cold water on dishwasher tablet shape marks and Detergent tablet shape mark applications are a wash out), the ECJ reasoned that it may, therefore, prove more difficult to establish the distinctiveness of marks in certain categories than for those in other categories.

Peter JA Munzinger, Bardehle Pagenberg Dost Altenburg Geissler, Munich