EU court rejects EUIPO’s decision on 3D shape mark
EU General Court reverses decision by the EUIPO Second Board of Appeal | Proceedings centre on trademarked 3D ‘baby bottle’ shape used in confectionery packaging.
The EU General Court has overturned a decision by the European Union Intellectual Property Office's ( EUIPO) Second Board of Appeal that invalidated a three-dimensional EU trademark in the shape of a baby’s bottle.
The contested mark, owned by US-based The Bazooka Companies (replacing The Topps Company as the applicant in the case), was used on packaging for a lollipop product named ‘Big Baby Pop!’.
In the decision this week, handed down on Wednesday October 26, the court’s fifth chamber considered whether the use of a three-dimensional shape of a contested mark differed from the form in which the mark was originally registered.
It also considered whether the addition of words and figurative elements, which caused the mark to differ from the mark as registered, amounted to an alteration of the mark’s distinctive character.
The EUIPO had found that there were key differences between the contested mark as registered (“the shape of a baby’s bottle with a teat, a lid corresponding to the shape of that teat, and a serrated surface underneath the teat”) and the mark as used, which had a transparent, thinner and smaller lid.
Differences ‘insignificant’
But the court found the marks to be essentially “identical” because the differences were not significant, and that it was “practically impossible” that the public “would perceive the differences relied on by EUIPO, in particular in terms of proportion, given that they are difficult to perceive with the naked eye”.
The mark had also been used in combination with coloured word and figurative elements, such as ‘Big Baby Pop!’, which featured the letter ‘i’ in the shape of a baby’s bottle. A baby character and figurative element were used alongside this on the packaging.
Although the owner of the contested mark needed to demonstrate that it “was still perceived as an independent mark and that combining it with another mark did not alter its distinctive character”, the court found that these elements as used did “not alter the form of that mark since the consumer can still distinguish the form of the three-dimensional mark, which remains identical in the eyes of that consumer”.
The court also found that such a combination is common in the candy, confectionery and sugar confectionery sector, and that it: “is inconceivable from a commercial and regulatory point of view to sell the goods at issue solely in the form of which the contested mark consists and without any label on its surface, even though, as EUIPO contends, the proprietor of the contested mark remains free to choose the format, colour, size and layout of the label covering it”.
'Striking shape'
The court referred to the fact that some of the additional figurative and word elements such as the ‘Big Baby POP!’ lettering and the stylised ‘i’, actually alluded to the baby bottle shape, and the figurative element regarding the product’s taste was found to be only “weakly distinctive”.
The bottle shape itself was found to be more striking, and so the ruling concluded the mark would continue to be perceived by the consumer as “indicative of the origin of the goods”.
Additionally, the court referred to the fact that the contested mark was registered without colour, but that the mark as used adopted bright colours. But the judgment determined that colours “possess little inherent capacity for communicating specific information” and the “commonplace” colours in question were not “so exceptional that they will be memorised in respect of the goods at issue”.
Board of Appeal ‘error’
The court ruled that “the Board of Appeal erred in finding that the contested mark had merged with the additional figurative and word elements to form, in the eyes of the relevant consumer, another sign, while the form of which that mark consists continued to be perceived by the relevant public as indicative of the commercial origin of the goods at issue”.
After deliberation, the court annulled the decision and the EUIPO was ordered to bear its own costs and to pay those of The Bazooka Companies.
Commenting on the outcome, Dirk Wieddekind, a partner at Taylor Wessing in Germany, told WIPR:
“The General Court has confirmed that the use of a three-dimensional mark together with additional figurative and word elements on its surface did preserve the rights in the registered mark. The decision does therefore strengthen the rights of owners of three-dimensional marks and helps to protect brand owners against unwarranted cancellation claims.”
Wieddekind added why he believes the decision to be significant.
“3D marks are commonly used together with additional figurative and word elements. Had the decision of the EUIPO been upheld, it could have become very challenging for owners of 3D marks to establish genuine use of their marks and to preserve their rights,” he said.
“It would have created the risk that many 3D marks that are in actual use could have been exposed to cancellation claims.”
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