The European General Court (“EGC”), in its ruling of 24 February 2016, rejected the action brought by The Coca-Cola Company (herein “Coca-Cola”) against the decision of the Second Board of Appeal of the Office for Harmonization in the Internal Market (“OHIM”), confirming the rejection of the application for a three-dimensional Community trademark consisting of the shape of its new contour bottles.

The dispute began in 2011, when the famous American beverage company filed an application for a Community trademark, consisting of the three-dimensional sign represented below, for goods included in classes no. 6, 21 and 32, respectively metallic, glass and plastic bottles and beverages. The application was dismissed by the OHIM on the grounds that the trademark applied for was devoid of distinctive character.

Coca-Cola appealed the decision before the Board of Appeal of the OHIM, claiming that the trademark at issue had a distinctive character, on the following grounds: i) the shape of the bottle was a natural evolution of the historical and worldwide distinctive Coca Cola “contour” bottle with fluting; ii) in any event, the trademark applied for had acquired a distinctive character through the use made on the market, particularly as a part of another Coca-Cola trademark, i.e. the trademark consisting of the shape of the famous bottle with fluting. In order to support this latter argument, Coca-Cola mentioned a specific precedent (Case C-353/03 Nestlé) in which in which the European Court of Justice had affirmed the principle that the distinctive character of a trademark may be acquired as a consequence of the use of that trademark as part of, or in conjunction with, another registered trademark.

However, the OHIM confirmed the appealed decision. In fact, it dismissed Coca-Cola’s first argument, noting that the shapes of the two bottles created a different overall impression – due to the presence/absence of the distinctive fluting – thus preventing any direct association between them; it also dismissed the second one, considering that the case at issue was not similar to the referenced case-law (concerning word, not shape trademarks) and that, however, it was not sufficiently proved that the trademark had acquired a distinctive character through use, since the evidence submitted by Coca-Cola was unreliable and not entirely relevant.

Coca-Cola brought an action against this decision before the EGC, claiming that the OHIM had not considered the trademark as a whole in order to compare it with the shapes of similar goods present on the market and that it had wrongly evaluated the evidence submitted in regard of acquisition of distinctive character through use. The EGC, as stated above, rejected Coca-Cola’s action as baseless.

With regard to the first ground above, the Judges, having pointed out that “a three-dimensional mark consisting of a (liquid good) container is not distinctive unless it permits the average consumer of the goods concerned (…) to distinguish those goods from the goods of other undertakings without any detailed examination or comparison and without being required to pay particular attention”, found that all individual components of the trademark applied for were devoid of distinctive character (as each of these is likely to be commonly used in the trade of the goods covered by the trademark application) and that the manner in which these components were combined was not capable of giving it distinctive character. Thus, the EGC found that the trademark applied for lacked of distinctive character as it “departs significantly from the norms or customs of the sector and thereby (can not) fulfil its essential function of indicating origin”.

With respect to the second ground, the EGC ruled that, although “a three-dimensional trademark might, in certain circumstances, acquire distinctive character through use even if it is used in conjunction with a word mark or a figurative mark” nevertheless the Coca-Cola trademark at issue was not clearly distinguishable from the trademark it was alleged to be a part of, since it was “absorbed” by the latter.

The EGC also stated that “none of the items of evidence (submitted by Coca-Cola), considered in isolation, was sufficient to establish that the mark applied for had acquired distinctive character through use” due to the lack of accuracy and relevance. This assessment also included the surveys that Coca-Cola produced: although they were considered reliable by the Court, in the Court’s view they were not sufficient, in themselves, “to prove to the requisite standard that the mark applied for has acquired distinctive character through use, throughout the European Union, in respect of a significant part of the relevant public”, because they were referring only to a minority of Member States.