Surface of wine bottles held not to be registrable

European Union
In Freixenet SA v Office for Harmonization in the Internal Market (OHIM) (Cases T-109/08 and T-110/08, April 27 2010), the General Court has upheld OHIM’s decision to refuse applications to register the surfaces of two sparkling wine bottles for goods in Class 33 of the Nice Classification.

The procedural history of the applications is long and complex. Freixenet SA filed the applications on April 1 1996. It expressly stated that it was seeking protection for the surface of a black matt bottle (Case T-110/08) and of a clear bottle, which, when filled, took on a matt golden colour and appeared to be frosted (Case T-109/08). A qualification was attached to each of the applications, saying that Freixenet did not wish to protect the shape of the bottle, but specifically the surface.

OHIM rejected the applications in 2007 and Freixenet filed appeals on the grounds that OHIM had committed three breaches of the Community Trademark Regulation (40/94) - namely:

  • the first and second limbs of Article 73 relating to OHIM’s duty to state the reasons upon which its decision is based and the parties’ right to be heard;
  • Article 7(1)(b) relating to marks which are devoid of distinctive character; and
  • Article 7(3) relating to distinctiveness acquired through use.
With regard to the duty to give reasons under Article 73, Freixenet appealed on the basis that OHIM had not provided reasoning for its decision since it had relied solely on facts derived from practical experience. In contrast, the General Court considered that OHIM was entitled to rely solely on facts derived from experience that were likely to be known by everyone, rather than on specific facts in the applications. The court commented that OHIM had, in support of its decision, expressly referred to the fact that a consumer looks at the label, rather than the surface, to determine the identity of the manufacturer of a bottle of sparkling wine. In addition, in Case T-109/08, OHIM had also noted that practical experience showed that, unless the bottle was very dark, its colour would always be affected by the colour of the liquid inside it.

The court agreed with OHIM that the shape of the bottle did little to inform consumers of the trade origin of the bottle and its contents, but merely added to the general aesthetic effect. This conclusion was supported by market research studies supplied by Freixenet, which established that no bottle was ever sold without a label. While OHIM had not referred specifically to evidence in the file, it had referred to practical experience from sales of mass market products, and this formed part of the reasoning behind its decision. Accordingly, there was no breach of the first limb of Article 73.

With regard to the right to be heard under Article 73, Freixenet’s appeal was based in part on the fact that the factual evidence raised by OHIM of its own volition should have been communicated to Freixenet. The court reiterated the general principle that OHIM must base its decisions (both in fact and in law) on evidence on which the parties have had the opportunity to present their comments. This right applied to the decision-making process, but not to its final position.

Since the annulment of the decision of the Fourth Board of Appeal on the grounds that Freixenet had not had the opportunity to submit comments on images of other bottles cited in that decision, Freixenet had had the opportunity to submit comments on those images. The First Board of Appeal had communicated the images to Freixenet and its decision was not based on the content of sites to which Freixenet claimed it had no access. As regards the facts derived from experience, these were well known to everyone, including Freixenet. In addition, the examiner had told Freixenet in previous correspondence that a wide variety of bottles of different materials and colours were on the market, and had invited the applicant to comment on three websites which showed examples of these bottles. As a result, the court felt that Freixenet had been presented with the opportunity to submit comments on the facts leading to OHIM’s decision.

With regard to the breach of Article 7(1)(b), the court reiterated that non-distinctive marks were not registrable. The distinctiveness of the marks at issue depended on whether they allowed the consumer to identify the wine as coming from a specific business. It noted that average consumers are not usually able to determine the origin of goods from their shape or packaging without an additional graphical or textual element. An ‘appearance’ mark would be harder to protect, as it must be significantly different from other products in the relevant sector, and not simply original or a variant from the norm.

The parties agreed that sparkling wines were mass-market goods and, therefore, the relevant public in this case was the whole of the European Union. It was further agreed that Freixenet’s application related to two marks – the matt effect and black colour in Case T-110/08, and the frosted effect and golden colour in Case T-109/08. The court highlighted the risk that, if the surfaces were registrable, Freixenet might be able to bring a claim against a competitor using black matt/golden frosted packaging, whether or not a bottle was used.

According to the court, since the surface of a bottle does not assist consumers in determining the origin of the bottle itself, it could not function as a trademark. The choice is made on the basis of the label (unless the consumer cannot read), and not ‘fanciful’ aspects. The court supported this by referring to the fact that no wine business sold its bottles without labels. In the present cases, the trademarks FREIXENET or CORDON NEGRO/CARTA NEVADA were always used in conjunction with the surface of the bottle. The court disregarded Freixenet’s argument that none of the other bottles given as examples by OHIM were on the market at the date of filing because there had been no prior wine business selling unlabelled bottles.

With regard to the breach of Article 7(3), the court reiterated that, to escape refusal under Article 7(1)(b), Freixenet had to prove distinctiveness acquired through use by providing evidence of:

  • substantial market share;
  • market strength;
  • geographical range and duration of use of the mark;
  • size of investment made by the business to promote the mark;
  • consumers who identified the goods as originating from the business; and/or
  • statements from professional associations.
It also confirmed that the distinctiveness must be acquired prior to the filing date.

In support of its case, Freixenet submitted a number of market research studies, sales data and consultants’ reports, certificates from 30 trade registries in Spain, as well as prior decisions from the Spanish courts and the Spanish Trademark Office. However, the court did not consider that this evidence was sufficient to prove distinctiveness acquired through use for a number of reasons.

First, the court held that the sales data related to bottles which were always sold under the CORDON NEGRO/CARTA NEVADA marks and in fact, related to three marks – the surface of the bottle, the Freixenet name and the CORDON NEGRO/CARTA NEVADA mark. Although it conceded that trademarks could be successfully used in combination, the court noted that the surface of the bottle was never used independently of the other two marks, and this was proof that it could not operate as a trademark.

Second, the market research did not involve consumers from all member states and were performed after the applications were filed. Therefore, they did not confirm that the marks had been distinctive at the application date. Third, the court noted that the percentage results were interpreted by Freixenet in a biased way which did not show the true picture - namely, that the marks were distinctive only in Spain. Finally, the court considered that OHIM did not have to take into account national decisions which did not apply EU regulations and were thus irrelevant to the appeal. Accordingly, Freixenet had not proved that the surface of the bottles had acquired distinctiveness through use in the European Union and the applications were rejected in full.

Freixenet has a reputation for fiercely protecting its intellectual property, both in Spain and worldwide. It will not welcome these judgments, not least because it has waited over a decade for the unfavourable outcome. The judgments may also cause problems for other manufacturers outside of the wine industry that had hoped that the surface of their own products might be protectable by a Community trademark. However, others may see the decisions as a chance to start using similar effects on their own bottles.

Ellen Forrest-Charde and Chris McLeod, Hammonds LLP, London

Unlock unlimited access to all WTR content