Procter & Gamble's soap-bar shape registration scrubbed out

In Procter & Gamble v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance has, at the second attempt, upheld the OHIM's refusal to register as a three-dimensional figurative Community trademark the shape of a bar of soap manufactured by Procter & Gamble because it is devoid of distinctive character.

Procter & Gamble, a US-based multinational, applied to the OHIM for the registration of a soap-bar shape combining concave and convex elements as a Community trademark. An examiner at the OHIM rejected the application on the grounds that Procter & Gamble's soap-bar sign consists exclusively of a shape which results from the nature of the goods themselves. The examiner's decision was confirmed by the Board of Appeal which added a number of other grounds for refusal, including the fact that the sign is devoid of any distinctive character.

Procter & Gamble appealed to the Court of First Instance which annulled the Board of Appeal's decision because, among other things, it had issued new grounds for refusal without allowing Procter & Gamble the opportunity to submit its observations on those issues. The case went back to the Board of Appeal and Procter & Gamble submitted its further observations. The Board of Appeal again refused the application, reiterating that the soap shape sign is devoid of any distinctive character.

Procter & Gamble again appealed to the Court of First Instance, claiming that (i) its rights to a fair hearing had been infringed because the second Board of Appeal decision was given by the same panel that had refused registration in the first decision, and (ii) its soap-bar shape has a distinctive character and should therefore be registered as a Community trademark.

The Court of First Instance rejected Procter & Gamble's arguments and refused to allow the registration of the shape as a Community trademark. The court reasoned that, since the Board of Appeal is in fact a department of the OHIM, it cannot be classified as a separate tribunal. In such circumstances, said the court, no reliance can be placed on rights to a fair hearing. The court further held that the soap shape does not have any distinctive character. The shape of a product can only be registered as a Community trademark, said the court, if it is capable of distinguishing the goods of one company from those of other companies. According to the court, concave or convex elements of a soap-bar shape would be perceived by consumers as either functional features (making the soap easier to grip) or as aesthetic features, but not as a means of distinguishing Procter & Gamble's soap from similar-shaped soaps manufactured by other companies.

The story does not end here, however, as Procter & Gamble has appealed to the European Court of Justice.

Steffen Hagen, Allen & Overy, Amsterdam