Shape of Cointreau bottle held to lack distinctiveness

There is perhaps no more difficult issue regarding the registrability of a mark under Israeli law than a three-dimensional (3D) mark. Both the registry and the courts have sought to achieve a degree of predictability and certainty in the examination of such marks, but the situation is still not fully settled.

It is against this background that applicant Cointreau, a well-known manufacturer of liqueurs, filed an application for registration of a 3D bottle as a trademark in Class 33 of the Nice Classification in respect of “alcoholic beverages (except beer)” (Application No 219577). The mark was described as a “square-shaped bottle with rounded shoulders, bright ribbon and warm amber colour depicted in the trademark, [which] has remained virtually unchanged for more than 150 years, since its creation in 1849”.

The issue before the examiner was whether the 3D mark was distinctive in light of the three-part cumulative test for registrability of such a mark as set out in Guideline No 61 and construed by the courts. These three conditions are:

1. whether the shape deviates from the ordinary shape in the relevant field;
2. whether the shape satisfies the function of a trademark as a source identifier and is perceived as such by the consumer; and
3. whether the shape has acquired distinctiveness based on use over a significant period of time.

The applicant sought to rely on an affidavit given by the authorised Israeli distributor in a previous application that had been abandoned. In addition, the applicant took part in an ex parte hearing before the examiner.

With respect to the first condition, the examiner stated that she had carried out an independent internet search using the Google search engine. She found that, while none of the other bottles identified as a result of her online search “was identical, there were characteristics similar to the bottle that was the subject of the application”. The examiner set out several of these bottle shapes in her decision. On this basis, she concluded that the shape of the applicant’s bottle was not distinctive, having regard to other shapes of bottles in the product area. Accordingly, the mark lacked the requisite distinctiveness.

Inasmuch as the examiner found that the applicant had not satisfied the first condition for establishing distinctiveness, it was strictly unnecessary to consider the remaining two conditions. Nevertheless, for completeness sake, the examiner referred to each of these remaining conditions. In so doing, she ruled that the mark did not function as a trademark, nor had the shape of the bottle per se acquired distinctiveness as a trademark, as distinct from the totality of the bottle.

Two procedural points in connection with this decision merit attention. First, as noted above, the examiner relied on Supreme Court jurisprudence for the proposition that such an independent search lies within the competency of the examiner. However, the principles that govern the metes and bounds of such independent factual research by an examiner are not settled. Second, the examiner allowed the affidavit to be submitted despite the fact that its execution did not fully comply with applicable local law and the affiant was not present at the hearing. Given this result, the position of the registry on the issue of the admissibility of an affidavit, the formalities required and the weight to be accorded to it are still not fully clarified.

Neil Wilkof, Dr Eyal Bressler and Company, Ramat-Gan