How using color could save a bottle-shaped trademark claim

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Absolut had to convince the Board of Appeal that its brand “deviated significantly from the standards or practices of the sector”. The more closely their bottle shape resembled existing liquor bottle shapes, the more likely their mark would be considered devoid of distinctiveness.

Assess distinctiveness of features

The Board of Appeal assessed the distinctiveness of the mark based on the perception of EU-wide consumers targeted by alcoholic beverage products as a whole – not just vodka. She concluded that the bottle’s rectangular body, shorter neck, tapered shoulder, and overall structure and proportions were not distinctive and “not distinguishable” from other products on the liquor market.

The board also said the design of the bottle’s surface, which consisted of a “crystalline structure”, was “complex and fanciful” but “not new, original, stunning or exceptional”. According to her, consumers could not memorize the mark and recall it “easily and instantly” as a distinctive sign.

The importance of color as a characteristic

However, the board took a completely different view when assessing the color elements of the mark. He said two large rectangular shapes, taking up most of the back of the bottle and colored various shades of copper, brown or gold, were visible from all sides and would “not go unnoticed” by consumers. The chamber also noted the prominent white frame displaying different shades of the same colors on the bottle’s front label and the copper foil wrapper around its neck.

It indicated that, unlike the structure of the body and the surface decoration of the bottle, the color elements of the mark deviated significantly from the shapes and uses already available on the market. The Council found that they had a “strong impact on the perception of the overall shape of the bottle”, allowing consumers to remember and recall – in particular – the design of the back of the bottle.

Due to its size and prominence, the board stated that the color palette would not be perceived by consumers as purely aesthetic decoration and would allow consumers to identify Absolut as the producer of the wares. The board pointed out that, while a single color is not normally in itself distinctive, the bottle of Absolut had various shades or shades of color which covered a significant part of its shape.

In light of this, the board concluded that the color features of the mark would fulfill a function of commercial origin and decided that the overall representation of the color and shape combination of the bottle was registrable as an EUTM.

Shape marks as part of a brand protection strategy

It is not uncommon for brand counterfeiters to imitate the shape or color of the packaging. Wordmark or logo protection will not help prevent this, and although registered designs can protect the look and feel of the packaging, they are time-limited. In contrast, a valid trademark can be renewed in perpetuity and, as part of a layered portfolio of protection, can help guard against counterfeiting of a wider range of aspects of your product.

Even so, it can be difficult to register non-traditional marks, including those for a bottle shape, as demonstrating that the shape is materially different from those already in use can be a high bar to overcome. But this Board of Appeal judgment is particularly instructive for those in the alcoholic and non-alcoholic beverages industry who are launching a new product in a bottle or other packaging that has not been on the market long enough to support the argument that it has acquired distinctiveness through use.

The decision indicates that adding elements of color to a shape could help an otherwise non-distinctive shape to proceed to registration on the basis of inherent distinctiveness. It also suggests that, although a single color is not normally distinctive, a color mark application could also be successful where the shades cover a significant – and clearly defined – part of the product applied for.

Co-written by Sarah Jeffery of Pinsent Masons.

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