Three-dimensional trademarks have given rise to some interesting European Community decisions in the last several months (see, for example, our comments on the Kit Kat and Lego decisions). A decision rendered last week by the General Court, concerning the Coca-Cola bottle shape, confirms that it is a real challenge to obtain registration for these trademarks.
In 2002, the Coca-Cola Company filed a Community trademark application to protect its well-known “contour glass bottle with fluting.” The trademark was accepted by the Office for Harmonization in the Internal Market (OHIM) on the basis of its inherent distinctiveness. The application showed six photographs of the glass bottle.
Coca-Cola’s 3-D Bottle Trademark Application (Fluted)
Over time, the increased use of new plastic bottles led Coca-Cola to seek additional protection. On December 29, 2011, the Coca-Cola Company filed two additional three-dimensional Community applications.
The first application showed an engineering line drawing of a bottle which, according to Coca-Cola was the same “contour bottle with fluting” for which registration already had been obtained. The Office objected that the new trademark was different from the older glass bottle mark, that it was devoid of any distinctive character, and that it had not acquired distinctiveness through use. However, on March 31, 2014, the Second Board of Appeal reversed and held that the bottle had:
[A] particular appearance which, taking into account also of the overall aesthetic result, is eye-catching and capable of holding the attention of the public concerned [and] depart[ed] significantly from the norm(s) of the sector(s).
Coca-Cola’s 3-D Bottle Trademark Application (Not Fluted)
The second application, filed on the same day, was for a similar shape but without fluting. The trademark examiner objected that the trademark lacked distinctiveness. Coca-Cola argued that the shape had acquired distinctiveness through use, but the examiner was not convinced. On March 27, 2014 the Second Board of Appeal of OHIM confirmed that the application should be rejected. The General Court affirmed, restating the well-established principle that:
[A]verage consumers are not in the habit of making assumptions about the origin of goods on the basis of their shape or the shape of their packaging in the absence of any word or graphic element, and it could therefore prove more difficult to establish distinctive characters in relation to such a three-dimensional mark than in relation to a word or figurative mark.
As a consequence, “only a mark which departs significantly from the norms or customs of the sector” may be registered. In this particular case, however, the Court stated that the mark applied for was “a mere variant of the shape and packaging of [the bottle with fluting] which will not enable the average consumer to distinguish the goods in question from those of other undertakings”.
With regard to whether the mark had acquired distinctiveness, the Court pointed out that the applicant must establish that its trademark acquired distinctiveness through use “throughout the European Union in respect of a significant part of the relevant public.” Otherwise, trademarks which lack distinctiveness “may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader.” Here, the Coca-Cola Company had submitted surveys conducted in 10 Member States, even though the European Union had 27 Member States at the date on which the application was filed. The Court held that this was not sufficient.
Coca-Cola has the option of appealing the matter to the Court of Justice of the European Union.