Non-traditional trade marks – bottle shapes
Distinctive bottle shapes and packaging can be protected as a trade mark, this can be valuable to food and drink manufacturers to help them to stand out, we explore the details.
In the EU and UK, the shape of a product or its packaging, are protectable as trade marks. As with other types of ‘traditional’ marks, the shape must meet the requirements of distinctiveness and cannot be a generic design. With such marks, it can also be difficult to overcome objections that the shape results from the nature or function of the product, be necessary to obtain a technical result, or give substantial value to the goods.
Bottle shapes, jars and other packaging for drinks and food items are interesting in this respect. Often, they are rejected on the basis that they lack distinctive character and that the shape is a customary form of packaging for the goods in question and do not differ significantly from an ordinary packaging shape. Even where there are differences, they are often deemed technical and functional, or deemed to add substantial value, to be too ‘aesthetically pleasing’ and as such, cannot be registered. It can be something of a lottery as to whether an application, especially at the EUIPO, will be accepted or rejected.
Some recent case law coming out of the EUIPO has however led to some interesting conclusions that could be useful for brand owners:
Vinicola Tombacco and Bottega
Bottega are known for their gold prosecco bottle, and own a 3D registration at the EUIPO. Back in 2016, a cancellation action was brought by Vinicola Tombacco on a number of grounds, including that the shape and colour of the bottle did not significantly depart from the norms of the sector and that the shape was commonly used for prosecco products and the choice of gold colour reflected the type of product.
The action was dismissed by the Cancellation Division due to the additional distinctive features included in the mark, including the letter ‘B’ and a satin finish ‘flame’ design on the front. The Boards of Appeal confirmed the Cancellation Division’s decision. Vinicola Tombacco appealed to the EU General Court, who issued a decision in May 2019.
The General Court supported the findings of the EUIPO decisions and rejected the appeal of Vinicola. Some points that were raised:
Alcoholic products, such as prosecco, are liquid and do not have an intrinsic shape. As such, the shape of the packaging is not imposed by the nature of the product and is not mandatory, with a number of different packaging options available. The shape results instead from marketing habits and consumer preferences.
The gold colour of the mark did not achieve a technical result (by preventing oxidisation due to chemical reaction with light) and in any event, the technical function of a colour is irrelevant; the restriction on registration applies only to shapes, not colours.
The gold colouring does not provide substantial value to the goods; again, the restriction on registration only applies to shapes, not colours.
Bacardi & Company Limited (Appeal R01737/2018-4)
Bacardi applied to register the shape of one of their rum products as an EUTM.
Bacardi are no strangers to bottle shape registrations, with numerous registrations for their product range at the EUIPO.
The EUIPO Examiner refused registration on the basis that the application lacked distinctive character. The Examiner held that the relevant elements of the sign, including the green tint to the bottle, label and red seal, were not considered to depart from the industry norms. Bacardi appealed on the basis of equal treatment and sound administration of justice; the EUIPO had previously accepted a number of 3D applications which included similar elements. Whilst the shape of the bottle itself may not be distinctive when considered alone, with the additional elements, it meets the threshold for registration.
The Board of Appeal agreed with Bacardi – the sum of the individual elements resulted in a mark which was adequately distinctive for registration. Whilst the colour scheme and different elements could be considered as purely decorative, ‘decorative’ is a term misconceived when applied to anything that is appealing to the eye.
Globefill make CRYSTAL HEAD vodka, created in part by Dan Aykroyd and American painter John Alexander. An invalidation action was filed by Skullduggery Rum Limited on the basis that the mark was devoid of distinctive character and that the shape provided substantial value to the goods.
During the proceedings, Globefill filed evidence that showed over 1,000 3D EUTMs registered in Class 33, almost all of which were bottles. There was only one skull shaped bottle, which was Globefill’s. The Cancellation Division agreed and held that the registration departs significantly from the norms or customs of the sector and fulfils its essential function of indicating origin and consequently, was not devoid of distinctive character.
Regarding the point on “substantial value”, such a concept had to be interpreted not only in economic terms, but also in terms of whether the goods would be purchased primarily because of their shape or other particular characteristic.
The Cancellation Division held that the shape was not an essential part of the branding and that Globefill had demonstrated that the relevant consumer, who was primarily intent on purchasing a luxury vodka product, would not be strongly swayed by the appearance of the bottle.
This was supported by evidence such as the product winning blind taste test awards and also because the product was sold in the UK for less than the recommended retail price. As such, the design was not an essential element which increased the value of the product, and the invalidation action was dismissed.
These decisions show that there are a number of factors to be taken into account when looking to register bottle and packaging shapes at the EUIPO and that potentially there is a less rigorous position taken by the EUIPO and better protection for 3D trade marks as a result. Not only are such trade marks registerable, but they can also be defended (and as such, are likely to be enforceable).
Brand owners need to keep in mind that the more customary a shape, the less it will be imbued with distinctive character. However, if there are elements of a bottle or packaging that do depart from the norms, it could be a useful additional element to consider when protecting a bottle or packaging as a brand.Read more food and drink insight
Senior Trade Mark Attorney, HGF Limited (London Office)