CFI scents lack of distinctiveness in perfume bottle case

European Union

In ars Parfum Creation & Consulting GmbH v Office for Harmonization in the Internal Market (OHIM) (Case T-104/08, May 5 2009), the Court of First Instance (CFI) has upheld a decision of the Second Board of Appeal of OHIM in which the latter had refused to register a three-dimensional trademark consisting of the shape of a perfume bottle on the grounds that it lacked distinctiveness.

In April 2006 ars Parfum Creation & Consulting GmbH applied for the registration of a three-dimensional trademark consisting of the shape of a perfume bottle for “perfumes” in Class 3 of the Nice Classification. In November 2006 the OHIM examiner rejected the application on the grounds that the mark lacked distinctive character.

In November 2007 the Board of Appeal upheld the examiner’s decision and found that the mark was devoid of distinctive character since it consisted of a perfume container like those often carried in a handbag. Therefore, its shape was common and usual in the perfumery sector. ars Parfum appealed to the CFI.

ars Parfum raised a number of arguments in support of its appeal, mainly relating to the board’s failure to provide a statement of reasons - especially when examining the facts of its own motion - and the violation of Article 7(1)(b) of the Community Trademark Regulation (40/94) in respect of distinctive character. ars Parfum claimed that the board had not justified its assessment of the distinctiveness of the mark and, therefore, was incorrect de facto. It added that distinctive character should be assessed only in relation to the sign applied for, arguing that the shape of the mark was neither common nor well-known. In addition, it challenged the board’s finding with regard to the distinctive character of the mark, stating that the board had erred in not transposing the case law for three-dimensional marks into the perfumery sector. ars Parfum claimed that the mark applied for was able to inform consumers that the goods originated from a specific and identifiable undertaking. It even argued that the burden of proof as to the uncommon nature of the shape of the mark did not rest upon it. Finally, it stated that the fact that its perfume bottle had the shape of a cigar or a tube was sufficient to distinguish it from other common shapes of perfume bottles that may be more complex.

The CFI first referred to the incumbent duty of OHIM to state its reasoning to allow the parties to know the reason for its decisions. The aim is to protect the rights of the parties and enable the EU courts to review the legality of OHIM's decisions. As a result, OHIM should indicate the grounds for refusal and the facts on the basis of which the application is refused.

The CFI then reiterated its case law regarding the examination of the facts by OHIM of its own motion. It highlighted that in the absence of inherent distinctiveness, the board could base its findings on facts resulting from the practical experience of the marketing of consumer goods on a large scale, without being obliged to provide examples. Moreover, the CFI underlined that if the mark applied for is devoid of distinctive character, the applicant should provide evidence of inherent distinctiveness or of distinctiveness acquired through use.

The CFI went on to observe that under Article 7(1)(b), there is a higher likelihood of non-distinctiveness arising from a closer resemblance of the three-dimensional mark to the shape of the relevant goods. Hence, only a mark that differed significantly from the norm in a particular sector could have distinctive character. In addition, the mere fact that the shape of the goods for which registration was sought was a simple variation of the usual shapes of the same kind of goods was insufficient for the mark to be distinctive.

Moreover, the CFI noted that the mark at issue consisted of a cylindrical, narrow and transparent perfume bottle with a pump at the top. However, the combination of the different elements that constituted the mark was common and, as a result, the relevant public (which consisted of average, well-informed and reasonably observant consumers) would not be able to distinguish its commercial origin. The CFI also held that the shape was so simple that it was highly unlikely that it would be able to confer distinctive character.

The action was thus dismissed.

The decision confirms that the registration of shapes as Community trademarks continues to be problematic. Arguably, registered designs are more appropriate for shapes which are likely to be considered anything other than unusual as trademarks.

Chris McLeod and Myrsini Feliou, Hammonds LLP, London

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