6 April 2020TrademarksSarah Morgan

EU court rejects dairy cooperative’s 3D butter TM

In a defeat for dairy product cooperative  Isigny-Sainte Mère, the EU General Court has  rejected its attempt to register a 3D trademark.

Isigny-Sainte Mère had applied to register the 3D shape, a round golden container, in March 2018, covering class 29 for butter.

However, the registration was rejected by an examiner and subsequently, on appeal, by the European Union Intellectual Property Office’s (EUIPO) Board of Appeal.

In May 2019, the Fifth Board of Appeal concluded that the 3D mark was devoid of any distinctive character, after deciding that the trademark would be perceived by consumers as a form of packaging having “nothing original and not distinguished from very similar packaging present on the market”.

The dairy cooperative appealed against the decision but, on Thursday, April 2, the General Court sided with the EUIPO.

Isigny-Sainte Mère put forward three arguments to the court.

First, it claimed that the appeal board defined too broadly the sector against which the distinctive character of the 3D trademark was to be assessed.

Following Koninklijke KPN Nederland (C‑363/99), said the cooperative, only products specifically covered by the application for registration (in this case butter) are intended to be taken into account in assessing the distinctive character of the mark so the appeal board was wrong to make reference to examples of product packaging that are dissimilar to butter and don’t come from the same producers.

However, the General Court concluded that the appeal board cited products used at the same time of day as butter—during breakfast—such as milk and marmalade.

“Consequently, the Board of Appeal was right to refer to the packaging used for those products in the context of the analysis of the question whether the mark applied for differed significantly from the habits of the sector,” added the court.

Second, Isigny-Sainte Mère argued that the appeal board didn’t give sufficient weight to the “allegedly arbitrary elements” of the trademark, such as the material, the golden colour of the packaging, and the figurative element constituted of a wave which appears in relief on the container.

But again, the General Court rejected the argument.

“Taken as a whole, the mark applied for does not in any way deviate, much less ‘significantly’, from the standards and habits of the butter sector, or even of the wider sectors of dairy products, spreads or even products food,” said the court, adding that the differences will solely be perceived as a variant of packaging.

Finally, the cooperative claimed that the appeal board infringed the principle of equal treatment and the obligation to state reasons by failing to take account of the EUIPO's previous decision-making practice, without explaining the reasons for it.

When dismissing this contention, the court said: “It should be noted that the Board of Appeal is not obliged to take a position on all the arguments put forward by the parties. It suffices to set out the facts and the legal considerations which are essential in the economy of the decision.”

The court dismissed the appeal and ordered Isigny-Sainte Mère to pay costs.

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