That really takes the biscuit: 3D trademark application rejected in Romania

On 8 February 2019 SC DOBROGEA BISCUIT SRL filed to register the 3D shape below as a trademark before the Romanian State Office for Inventions and Trademarks (OSIM).

OSIM received the filing M 2019 00846 for goods in Class 30 (biscuits) and services in Class 35 (“Retail services relating to biscuits; Import and export services relating to biscuits; Wholesale services relating to biscuits; Advertising and publicity relating to biscuits”).

The shape corresponds to one of the most emblematic biscuits in Romania, known as the Eugenia biscuit, which comprises two oval-shaped biscuits stuck together with a paste of various flavours (eg, vanilla, chocolate or rum) – a childhood sweet of many generations in Romania.

An important player in the production and distribution of cakes, confectionery specialties and pastries in the Romanian market, which also owns a biscuit factory that produces several varieties of biscuit, lodged observations against the registration of the application on the following absolute grounds:

• The trademark application lacked any distinctive character.
• The application consisted exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of trade.
• The application consisted exclusively of signs or indications that may serve, in the course of trade, to designate the kind, quality, geographical origin or other characteristics of the goods or service and may deceive the public, especially with regard to the geographical origin, quality and nature of the goods or services.
• The application consisted exclusively of the shape of goods imposed by the nature of the product, necessary to obtain a technical result or which gives substantial value to the goods.

An impressive volume of evidence was filed together with the observations showing that the biscuit shape is commonly known in the country and that biscuits of this shape are produced by numerous entities. Moreover, there was evidence of several recipes with this shape of biscuit.

The opposing company argued that the 3D trademark application did not fulfil the essential function of a trademark – namely, to ensure the origin of the goods and services requested for protection – as it was no different from other biscuits produced by other pastry and confectionary producers in Romania. Therefore, it did not enable consumers to identify the goods and services as coming from a certain entity.

Moreover, as mentioned above, this shape of biscuit has been widely known in Romania for generations and the applied-for 3D shape was as a result of the nature of the biscuit and established by industry norms.

Taking all these observations into consideration, OSIM refused the registration in whole, in a decision which remains final.