Trademark in a bottle? The Tribunal “sends an SOS” to future applicants

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General Court of the EU – T-862/19 – Brasserie St Avold c. EUIPO – November 25, 2020

In accordance with Article 4 of Regulation (EU) 2017/1001 (“EUTMR”), the shape of a product or its packaging may constitute a European Union trade mark, provided that this sign is such as to distinguish the products of one company from those of another company.

Pursuant to Article 7(1)(b) EUTMR, trade marks devoid of distinctive character are excluded from registration.

What if, then, a subject asked for the protection of a bottle characterized by a particular label affixed to it? In the case at hand, the General Court of the EU refused such registration, providing an in-depth analysis of the rules and principles in the matter.

On March 16, 2018, the French company “Brasserie St Avold” applied for an EU trademark for a 3D shape of a bottle on which a triangle-shaped label is affixed, as shown in the image below below:

EUIPO having refused registration, the French applicant brought an action before the General Court, arguing – inter alia – that:

  1. the mark consisted solely of the label specifically affixed to the bottle, without this bottle being part of the sign applied for;
  • a previous Tribunal decision (T-313, on which our comment can be found here) had stated that – in the food sector – companies have a strong incentive to make their products identifiable and, therefore, the average consumer is completely at risk. capable of perceiving the shape of a product’s packaging as an indicator of its commercial origin.

However, the General Court agreed with EUIPO’s refusal.

First of all, EUIPO was considered to have correctly taken into account the perception generated – among consumers – by all the elements making up the contested sign: thus, a bottle fitted with its crown cap and its label in triangle shape (and not, as requested by the applicants, only the label).

In any event, the General Court clarified that practices in the beverage labeling sector are characterized by a wide variety of shapes and forms.

Secondly, the Court provided an interesting and detailed overview of the principles established – over the years – by EU case law regarding the distinctive character of a 3D mark constituted by the packaging or the shape of the goods. Specifically:

  • to assess whether or not a mark is distinctive, the perception of the average consumer is not necessarily the same in the case of a 3D mark (consisting for example of the shape of the product itself) and in the case of a a word or figurative mark: it is not customary for the average consumer to deduce the origin of the product on the basis of its packaging (in the absence of any graphic or textual element), and therefore may be more difficult to establish distinctiveness in the case of such a 3D mark;
  • more particularly, when a 3D mark represents the packaging of a liquid product (such as a bottle), this will only be distinctive if it allows the relevant public to distinguish this product from those of other companies, without it being necessary to carry out a particular comparison;
  • the more the shape for which registration is sought resembles the shape that the product in question will take, the more likely it is that this shape will be devoid of distinctive character within the meaning of Article 7(1)(b) EUTMR: the registered sign must therefore differ substantially from the basic forms of the product commonly used on the market, and it must not appear as a simple variation, or even a possible alternative of these forms;
  • thus, when a 3D mark consists of the shape of the product for which registration is sought (or of its packaging), the mere fact that such a shape constitutes a variation with respect to one of the shapes commonly used on the market is not sufficient to establish that such a mark is distinctive. It should always be checked whether such a sign enables the average consumer of this product to distinguish this product from those of other undertakings.

Following these guidelines could indeed be very useful for future trademark applicants, seeking to protect 3D figures consisting of the packaging or the shape of the products.

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