Shell shape mark for pastries crumbles before the CFI

European Union
In GM Piccoli Srl v Office for Harmonization in the Internal Market (OHIM) (Case T-8/08, March 10 2009), the Court of First Instance (CFI) has upheld a decision of the First Board of Appeal of OHIM in which the latter had refused to register a three-dimensional mark consisting of the shape of a shell.
 
In July 2005 GM Piccoli Srl applied for the registration as a Community trademark (CTM) of a three-dimensional mark consisting of the shape of a shell for goods in Class 30 of the Nice Classification. The OHIM examiner refused registration on the grounds that the mark was not distinctive per se or as a result of its use. Piccoli appealed to the Board of Appeal of OHIM and reduced the specification of the goods covered by the application. In September 2007 the board dismissed Piccoli’s appeal primarily on the basis of Article 7(1)(b) of the Community Trademark Regulation (40/94) (inherent distinctiveness). The board also concluded that the mark was not registrable on the basis of acquired distinctiveness.
 
Piccoli appealed to the CFI. Before the court, Piccoli raised a number of arguments based on the infringement of Articles 7(1)(b) and 7(3). Piccoli claimed that the mark had distinctive character because the shape was new, original and distinctive. In particular, Piccoli argued that the mark - a St Jacques shell-shaped brioche with oblique stripes on its surface - had never been used before for any kind of baked pastries. Moreover, Piccoli claimed that the mark had acquired distinctiveness through use in Italy, which it claimed represented a substantial part of the European Union.
 
The CFI reiterated that a mark’s essential function is to identify the origin of the goods and distinguish them from the products of other companies. It also clarified that the distinctiveness of a mark should be assessed not only in relation to the goods and services, but also in relation to how the mark is perceived by the relevant consumers. In the present case, the court found that the relevant goods were baked pastries and the relevant consumers were those who did not pay much attention when choosing between different products of the same type.
 
Furthermore, the CFI underlined that the criteria of distinctiveness are the same for all categories of marks, including those consisting of the shape of the product itself. However, the perception of relevant consumers differs in matters of descriptiveness, particularly where the mark is three-dimensional and consists of the shape of the product itself. The CFI also recalled that consumers do not assess the commercial origin of goods based exclusively on their shape or packaging. Therefore, three-dimensional marks consisting of the shape of the goods with no graphic or word elements were more unlikely to be distinctive. The CFI held that, in fact, there was a higher likelihood of non-distinctiveness arising from a closer resemblance of the three-dimensional mark to the shape of the relevant goods. On this basis, the CFI concluded that the shape of the mark at issue did not differ from other shapes commonly used in this sector and did not allow consumers to identify the origin of the goods. The CFI also held that the oblique stripes on the surface of the pastries did not make an impression on the relevant consumers, bearing in mind that the existence of particular or original features may give a mark distinctive character.
 
The CFI also rejected Piccoli’s argument that the mark should be registrable because OHIM had already allowed the registration of the mark for flour and bread in Class 30. The CFI emphasized once again that the distinctive character of a mark should be assessed in relation to the goods and services for which registration is sought and according to how the relevant consumers would perceive the mark. In addition, the CFI stated that a mark should be registered on the basis of Article 7(3) only if it had acquired distinctiveness through use in part of the European Union.
 
Moreover, in terms of registration of non-verbal marks, the assessment of distinctiveness is the same across the European Union. Therefore, the impression of consumers in respect of a three-dimensional mark is also the same across the European Union and, for a mark to be registered on the basis of Article 7(3), it must have acquired distinctiveness across the European Union. Following this logic, the CFI concluded that if the mark is not distinctive in part of the European Union, it will not be registrable as a CTM.
 
Chris McLeod and Myrsini Feliou, Hammonds LLP, London

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