The General Court decision Giorgio Giorgis v OHIM on the 25th September, 2014 serves as a reminder of the challenges involved in registering the shape of a product as a community trade mark. The court upheld the first Board of Appeal’s cancellation of the trade mark registered to the applicant in the case, Mr Giorgio Giorgis. The three dimensional mark consisted of two transparent goblet shaped containers in cardboard casings registered against goods including ice-creams, yoghurts and sorbets.

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The trade mark was found to be devoid of distinctive character. To possess distinctive character a mark must identify the goods in question as originating from a particular undertaking. The court pointed out that the average consumer is not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of a graphic or word element. This makes it particularly difficult to establish distinctive character for shape marks. According to the court only a mark which departs significantly from the norm or customs of the sector will be capable of indicating the origin of the product and in this case that was not achieved.

It was further held that the trade mark had not acquired distinctiveness through use. For such a plea to succeed, a significant proportion of the public must identify the goods concerned as originating from a particular undertaking because of the mark. Despite the fact that the applicant submitted evidence as to use in eight EU countries, the court held that the above criteria had not been met. In particular they held that it had not been established that the consumer retained in their memory the shape of the goods in particular as an indication of its commercial origin, as opposed to the accompanying word mark that appeared on its packaging.

It is well established at this point that it is difficult to obtain a valid trade mark registration for the shape of a product. Community design protection may be an effective alternative or addition. Registration is relatively inexpensive, the registered design is not tied to a particular class of goods and there is no examination for validity before registration. Design rights are therefore quick and easy to obtain and may significantly enhance the position of the rights holder.