Strict practice regarding shape marks also applies to packaging

The Supreme Court has refused to register a three-dimensional (3D) trademark for fish products (Case 4A_633/2010, May 23 2011).

German company Deutsche See GmbH, a manufacturer of fish products, sought to register the 3D trademark depicted below for fish in Class 29 of the Nice Classification and gastronomy services in Class 43:

The Swiss Federal Institute of Intellectual Property, the Federal Administrative Court and, recently, the Federal Supreme Court refused to register the mark on the grounds that it lacked distinctiveness.

In its decision, the Supreme Court briefly summarised its practice regarding 3D trademarks and noted that consumers do not generally perceive the shape of a product as an indication of source, unless the shape at issue is very unusual and distinct from the ordinary shape of the goods in question.

The court then considered whether this practice also applied to packaging, and came to the conclusion that this was the case. While consumers may perceive the overall appearance of packaging (ie, shape, colour and graphical and word elements) as an indication of source, this does not mean that they will perceive the packaging as such, without any other signs, as an indication of origin. The Supreme Court pointed out that, for some products, consumers have been taught to perceive the shape of packaging as an indication of origin (eg, perfume bottles). However, consumers will not perceive the packaging of fish products primarily as an indication of source.

The court concluded that, while the packaging at issue was aesthetically pleasing, it was not sufficiently different from other types of packaging commonly used for fish products.

The Supreme Court did not consider why the application was also refused for restaurant services.

Mark Schweizer, meyerlustenberger, Zurich  

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