Scope of protection of shape marks clarified

European Union
In Weldebräu GmbH & Co KG v Office for Harmonization in the Internal Market (OHIM) (Case T-24/08, March 4 2010), the General Court has dismissed an appeal from a decision of the Board of Appeal of OHIM in opposition proceedings brought by Weldebräu GmbH & Co KG against an application by Kofola Holdings as to register a bottle shape mark.
The marks of both parties consisted of bottles of cylindrical form with a helically formed neck, as opposed to traditionally formed necks. Weldebräu's evidence asserted that it had won various prizes for the special design of its bottle. At a more detailed level, the marks differed as follows:
  • The shape in the earlier registered mark was longer and slimmer.
  • The body of the bottle in the earlier mark was straight, whereas the body of the bottle in the mark applied for had a curvy form.
  • The necks had different spirals, the earlier mark showing a bottle with only two helical turns in its neck, whereas the neck on the bottle shape applied for was wider and had at least four turns.
  • The opposed mark included the word element 'snipp' engraved on the lower part of the body of the bottle in small sized letters of the same colour as the bottle.
Both the Opposition Division and the Board of Appeal of OHIM had rejected the opposition, which was based on what is now Article 8(1)(b) of the Community Trademark Regulation (207/2009) (likelihood of confusion).        
The decision of the General Court proceeded on the basis that the usual approach for assessing the overall impression of trademarks consisting of words, with or without graphical elements, by reference to phonetic, visual and conceptual similarity cannot be applied for shape marks. The court held that the word element on the opposed mark, which was “minor in size and engraved on the bottom part of the [mark]”, was not liable to affect the overall impression conveyed by the mark. It also held that a conceptual comparison was impossible since the marks at issue “do not convey any meaning”.
In contrast, conceptual similarity was taken into account in the decision of the Board of Appeal of OHIM in an opposition by Beauté Prestige International to an application by Lingyun Fan to register a bottle in the shape of a male human torso (Case R1089-2008/2). The distinction between the two may be that a sufficiently fanciful shape can "convey meaning", but a design which is merely a bottle, however elegant, will not. In 2007 the Board of Appeal stated in an opposition brought by the Coca-Cola Company against REWE Zentral AG that conceptual similarity would, in most cases, be irrelevant when comparing bottle shapes, "unless the shapes represent something more than a bottle" (Case R1145-2006-2).
Taking away both phonetic and conceptual similarity from the analysis left only visual comparison as the tool for assessing the overall impression and the allegation of likelihood of confusion. Applying this, the court followed the Opposition Division and the Board of Appeal in finding that the differences in shape, together with the word element, produced a low degree of visual similarity, with the result that confusion was unlikely.
Weldebräu argued that the tactile impression of the marks was important and should be taken into account. The court endorsed OHIM’s finding that, since consumers would generally see the bottles on display in retail food aisles, bars or restaurants, “prior to purchase the consumer will concentrate mainly on the word and figurative elements on their labels, such as the trademark’s name, logo and/or other figurative elements indicating the product’s origin”. This finding implies a reluctance to believe that shape marks normally carry strong weight in consumers’ purchasing decisions.
The court was at pains to point out that the case was decided on the basis that the earlier mark had only an average degree of distinctiveness. A broader scope of protection might have been allowed had Weldebräu been able to show compelling evidence of acquired distinctiveness.
Vanessa Marsland, Clifford Chance LLP, London 

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