EU court rejects German firm’s bid for bottle shape TM
Court dismisses food and drink company’s appeal for a 3D mark on functionality grounds | Minor arbitrary elements in a mark do not undermine such grounds, it said.
A German artisan food and drink company, which sought to register a three-dimensional (3D) trademark, has lost its appeal against a decision taken by the European Union Intellectual Property Office (EUIPO).
The seventh chamber of the General Court dismissed Wajos' appeal, upholding the EUIPO's decision to refuse the registration of the requested trademark, representing a 3D shape for a container.
In its decision handed down yesterday, July 5, the court ruled that the res judicata principle was not infringed, and that the shape of the container fell within the scope of article 7(1)(e)(ii) of regulation no 207/2009 due to its technical functionality.
Background
Wajos submitted an application to the EUIPO in December 2015, seeking to register the 3D mark.
The applied-for trademark represented a distinctive sign consisting of a 3D shape, and aimed to cover a wide range of goods falling within classes 29, 30, 32, and 33.
The goods for each class encompassed various food and beverage products, including edible oils and fats, seaweed extracts, yoghourt-based beverages, cooked apples, fish paste, canned fruits, dairy-based desserts and pickled vegetables.
But in October 2021, the EUIPO partially refused registration of the requested mark, and Wajos sought an annulment of this decision.
The previous ruling
The company claimed that a previous judgment (form of a container, T-313/17) had already determined that its trademark should be registered, and criticised the board for disregarding this ruling, which held that the container’s shape went beyond technical and functional aspects alone.
The board disagreed with these arguments, emphasising that the res judicata principle only applies to facts and points of law that have been definitively resolved by a previous judicial decision.
Wajos argued that while the shape of their trademark container did possess technical and functional considerations, it also held aesthetic value and distinctiveness compared to other shapes on the market.
It claimed that the shape's essential characteristics should not be exclusively assessed from a technical perspective.
The court disputed these arguments, referring to article 7(1)(e)(ii) of regulation no 207/2009, which states that signs consisting exclusively of a shape necessary to obtain a technical result shall be refused registration.
No definitive settlement
The court emphasised that this ground for refusal aims to prevent trademark law from granting a monopoly on technical solutions or utility features of a product to a single company.
The court also clarified that the res judicata principle must cover grounds that constitute necessary support for the operative part of a judgment.
In this case, it determined that the previous judgment did not definitively settle the matter, and that the board of appeal was within its rights to reconsider the application.
Regarding violation of article 7(1)(e)(ii), the court highlighted that the provision aims to strike a balance between functional shapes and the potential restriction of competitors.
The presence of minor arbitrary elements does not undermine the technical functionality of a shape, it added.
