Shape marks for pouches do not stand up to CFI test

In Deutsche SiSi-Werke GmbH & Co Betriebs KG v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has refused the registration of the shapes of stand-up pouches as three-dimensional Community marks for fruit juice.

Deutsche SiSi-Werke GmbH & Co Betriebs KG, which produces, among other things, the Capri-Sonne brand of fruit juice, sought to register various shapes for stand-up pouches as three-dimensional Community trademarks for drinks packaging. It argued that because the shapes of the pouches were unusual, (i) there was no need for them to remain available for use by other drinks producers, and (ii) they had sufficient distinctive character to warrant registration. The OHIM rejected the application on the basis that the marks lacked distinctiveness.

The CFI affirmed. It held the following:

• A sign that fulfils functions other than that of a trademark is distinctive for the purpose of Article 7(1)(b) of the Community Trademark Regulation only if it may be perceived immediately as an indication of the commercial origin of the goods or services in question. In the case at hand, the average consumer would not have perceived the pouches as an indication of the specific commercial origin of the product because they were indistinguishable from the appearance of the product itself.
  
  
• Neither the individual features nor the overall impression of the pouches' appearance were significantly different from the standard appearance of stand-up pouches.
  
  
• This type of packaging is not exceptional as it is used increasingly frequently by drinks manufacturers. The court also found that Deutsche SiSi-Werke's alleged long-standing commercial use of the pouches did not prove that the signs had acquired distinctiveness.
  
  
• Technical difficulties and costs of manufacturing the pouches are not relevant criteria for the purpose of assessing whether the marks applied for have distinctive character.

The court's criteria for the assessment of the distinctiveness of packaging seem stricter here than in Nestlé Waters. In that decision, the court stated that even a minimum degree of distinctive character is sufficient to render inapplicable the ground for refusal set out in Article 7(1)(b) (see Bottle shape mark decision may be a breakthrough).

In respect of the assessment of the need to preserve the availability of certain signs, the court stressed that the competitors' interests in using the design at stake for their own products is no criterion in itself. The question is whether the relevant public is able to distinguish the products concerned from those having a different trade origin.

Reinhard Schanda and Rainer Allitsch, Sattler & Schanda Rechtsanwälte, Vienna