Last week, The General Court handed down judgment in The Coca-Cola Company's (Coca-Cola) appeal against the refusal of its 3D trade mark application for the shape of one of its bottles.

The mark

Coca Cola's application was for its current bottle shape (the "Later Mark") in relation to, among other things, glass and plastic bottles in Class 21.

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OHIM refused the application on the basis that the mark was devoid of any distinctive character because it does not possess any characteristics that distinguish it from other bottles available on the market.

Coca Cola argued on appeal that the mark was a natural evolution of its famous bottle with fluted edges, as shown below (The "Earlier Mark"):

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It claimed that the Later Mark shares many features with the Earlier Mark and is an “evolved” version which would be equally recognised by consumers. The only difference between the two marks, it said, is the vertical “fluting” on the Earlier Mark and, therefore, any evidence applicable to the Earlier Mark would go towards establishing the acquired distinctiveness of the Later Mark.

The evidence

Coca Cola submitted consumer surveys from Denmark, Estonia, France, Germany, Greece, Italy, Poland, Portugal, Spain and the United Kingdom, showing consumer recognition and association of the Later Mark with Coca Cola and its drinks. This ranged from 48% in Portugal to 79% in Spain. It argued that these surveys represented a broad range of markets and populations as well as a geographically, linguistically, economically and culturally representative cross-section of the EU.

It provided approximate marketing expenditure for its Coca-Cola, Coca-Cola Light (Diet Coke) or Coca-Cola Zero drinks for the years 2010 and 2011 in Austria, Estonia, Lithuania, Latvia, Bulgaria, Cyprus, Czech Republic, Greece, Hungary, Italy, Malta, Poland, Portugal, Romania, Slovakia, Slovenia and Spain.

It also provided specific examples showing how products bearing the Later Mark have been sold and promoted through TV advertisements, promotional campaigns in EU member states, Olympics sponsorships, special edition bottles and the applicant’s websites in all 27 EU member states.

The ruling

The Court disagreed that the Earlier Mark is similar to the Later Mark, finding that there are substantial differences between the shapes of the respective bottles, meaning that consumers will not immediately associate the Later Mark with the Earlier Mark.

Even though the Later Mark might be an evolution of the Earlier Mark, the Court did not consider it to be markedly different from various basic shapes for other bottles on the market.

The Court concluded that. without the ‘Coca-Cola’ label, no association would be made by the public concerned between the Later Mark and the brand ‘Coca-Cola’.

The weaknesses of Coca Cola's evidence

Coca Cola ultimately fell down on the weakness of its evidence. Distinctive character needs to be proved throughout the European Union and although an applicant doesn't necessarily need to provide evidence from every member state, it does bear the burden of establishing, through the evidence that it submits, that its mark has acquired distinctiveness throughout the EU.

Coca Cola's surveys showed that the Later Mark had acquired a distinctive character in the 10 countries where they were carried out; however, they did not establish that that was also the case in the other 17 member states of the EU. Coca Cola had not demonstrated that the member state markets covered by the surveys are comparable to markets in other member states and that the results of those surveys could be extrapolated to them.

Secondly, the evidence of advertising spend did not specifically relate to the Later Mark. The evidence stated whether it related to Coca-Cola, Coca-Cola Light (Diet Coke) or Coca-Cola Zero, but did not distinguish between spend in relation to those drinks in the old or new style of bottle.

Thirdly, the sales figures and advertising material constitute only secondary evidence which may support direct evidence such as surveys. Without conclusive survey evidence, the sales figures and advertising material on their own were not enough to show that consumers perceive the mark as an indication of commercial origin.

Fourthly, some of the evidence was from 2012, but the application was filed in December 2011. Only evidence dated earlier than the date of filing of the application can be considered for the purpose of demonstrating that the mark has acquired distinctive character.

Finally, the evidence was inconsistent. Sales figures for Belgium and Luxembourg, which together have a population of approximately 12 million, were almost the same as those for Germany, which has a population of almost 80 million. Similarly, the sales figures for Lithuania, which has a population of approximately 3 million, were almost twice those for Poland, which has a population of almost 38 million.

Comment

This case demonstrates the high hurdle of proving acquired distinctiveness of a mark throughout the European Union. Brand owners should be careful to obtain independent survey evidence, ideally from every member state and, if that is not possible, the evidence must clearly show that the data can conclusively be extrapolated to cover any countries for which direct evidence has not been acquired. The evidence must be in relation to the exact mark that is being applied for, rather than an earlier incarnation, and financial data must be from before the date that the application was filed and, again, ideally from as many member states as possible.