Shape of amber-coloured glass bottle refused as 3D mark for beer

In Unión de Cervecerías Peruanas Backus y Johnston SAA v Office for Harmonisation in the Internal Market (OHIM) (Case T-323/11, July 12 2012), the Sixth Chamber of the General Court has upheld the refusal to register a three-dimensional (3D) mark, the relevant parts of which are shown below, as a Community trademark (CTM) for beer:

The application (Application No 8.592.081), filed by Unión de Cervecerías Peruanas Backus y Johnston SAA, consisted in the shape of an amber-coloured glass bottle, with a wide base and a long, narrow neck. The central part is narrower and bears an engraving. The application covered “beer” in Class 32 of the Nice Classification.

The OHIM examiner, the Board of Appeal and, subsequently, the General Court, considered that the mark was devoid of distinctive character under Article 7(1)(b) of the Community Trademark Regulation (207/2009) - that is, it was not able to distinguish the commercial origin of the goods that it intended to identify.

In its decision, the General Court first set out general considerations concerning the distinctiveness of 3D trademarks in light of the case law of the Court of Justice of the European Union:

• The distinctiveness of a 3D mark must be assessed with the same criteria as those applicable to any other type of trademark, taking into account the products or services at issue and the perception of the target public (in the present case, the relevant public consisted of the average EU consumer, as beer is a common consumer product which targets end consumers), but bearing in mind that the average consumer is not used to identifying the commercial origin of a product based exclusively on its shape in the absence of any graphic or textual elements. Consequently, it can be more difficult to establish the distinctiveness of a 3D mark than that of a word or figurative mark.
• Only a 3D mark that substantially departs from the shapes normally used in a particular sector can be considered to be distinctive.

The applicant argued that the trademark was distinctive for the following reasons:

• The combination of the elements making up the bottle gives it a unique appearance that distinguishes it from other bottles available on the market.
• The presence of an engraving on the bottle and its position rendered the mark distinctive. According to the applicant, the engraving represented the ‘stone of 12 angles’, which was used in masonry in the Inca Empire.
• The engraving is situated in the centre of the bottle, where labels in beer bottles are normally located. Therefore, consumers would perceive the engraving as being the label of the product, thereby enabling its origin to be identified.
• Consumers will focus their attention on the engraving, as it is not covered by the label (located on the neck of the bottle).
• The trademark has been registered by the Industrial Property Registry of Peru.

The General Court held that the shape at issue, taken as a whole, was not significantly different from other beer bottles commonly used in trade, but was a simple variant of these forms. In particular, the court held as follows:

• The use of an amber-coloured glass bottle with a wide base and a long, narrow neck with an engraving on its centre is common for beer bottles.
• The use of amber-coloured glass (as well as other colours, such as dark brown and dark green) is a technical constrain for beer bottles, as beer must be protected from the harmful effects of light.
• EU consumers will perceive the central engraving as a simple ornamentation, rather than a mark, because:
  • the engraving is not especially original or eye-catching;
  • the applicant has not proven that the Inca engraving would be recognised as such by EU consumers; and
  • even consumers with a knowledge of the Inca culture would need to make a considerable intellectual effort in order to understand that the engraving represented the ‘stone of 12 angles’, given its reduced size and stylised design.
• The engraving would not be perceived as a label, even though it is located in the centre of the bottle. In this regard, the court observed - in light of the examples of other beer bottles found in the proceedings’ documents - that it is not uncommon to use engravings in the centre of beer bottles.
• With regard to the applicant's allegation that consumers would focus their attention on the engraving because it is not covered by the label, the court noted that, in the proceedings’ documents, there were other examples of bottles bearing ornamentations on their central part and a label on their neck.
• The fact that the trademark was registered in Peru was irrelevant because the CTM system is autonomous, with its own rules and objectives, and its application is independent from any national system.

The General Court concluded that the 3D mark at issue lacked distinctiveness, as it did not allow the relevant public to identify the commercial origin of the beer or to distinguish the applicant’s products from those of other undertakings.

Pablo Martí, Grau & Angulo, Barcelona