Procter & Gamble's soap shape mark bubble burst by ECJ

In Procter & Gamble Company v Office for Harmonization in the Internal Market (OHIM), the European Court of Justice (ECJ) has upheld the Court of First Instance's (CFI) decision to refuse the registration of a three-dimensional mark for the shape of a bar of soap.

The OHIM rejected Procter & Gamble Company's application to register a particular parallelepiped shape as a Community trademark for soap. On appeal, the CFI rejected Procter & Gamble's arguments and refused to allow registration (see Procter & Gamble's soap-bar shape registration scrubbed out). It found that the shape was only a slight variation on the numerous parallelepiped shapes commonly used for soaps by third parties. Therefore, the relevant public would not be able to distinguish immediately and with certainty Procter & Gamble's soaps from those of other companies. In addition, the CFI stated that the soap-bar shape would be perceived by consumers as having a utilitarian function (ie, it made the soap easier to grip). Procter & Gamble appealed.

The ECJ dismissed the appeal and upheld the CFI's decision. It affirmed that, pursuant to Article 7(1)(b) of the Community Trademark Regulation, the criteria for assessing the distinctive character of three-dimensional marks are the same as those that apply to other categories of marks. However, it also confirmed that consumer perception is not necessarily the same where the sign consists of the shape of goods rather than a word or figurative mark. While the public is accustomed to perceiving word or figurative marks immediately as identifying the trade origin of goods, this is not necessarily the case where the sign and the outward appearance of the goods are one and the same.

The ECJ agreed with the CFI that the claimed shape did not indicate trade origin as it (i) varied only slightly from other shapes commonly used for soaps, and (ii) would be perceived as having a utilitarian function.

Cristina Bercial-Chaumier, Bureau DA Casalonga-Josse, Alicante