The recent ruling on the packaging on German confectionery brand KNOPPERS illustrates once again the difficulties of registering 3D elements as trademarks. The EU’s highest court agreed with the lower courts’ earlier rulings that the KNOPPERS packaging does not fulfil the criteria for distinctiveness.

Package design can play a key role in the success of confectionery products, influencing purchasing decisions just as much as taste, price or quality. However, they are not always easy to register as trademarks.

Trademark protection of three-dimensional marks and other characteristics

Grounds for exclusion have been imposed to prevent companies from acquiring a monopoly over technical solutions or a product’s functional characteristics. To prevent shapes (and other characteristics) from being monopolised in this way, EU TM legislation contains three grounds of exclusion. These exclude shapes and other characteristics (such as colours and sounds) from trademark protection, if:

  • they consist of a shape which results from the nature of the goods themselves;
  • the shape gives substantial value to the goods; or
  • if the shape of goods is necessary to obtain a technical result.

Shapes that are not excluded on these grounds can obtain trademark protection, but – as with trademarks in general – only if they satisfy criteria for distinctiveness. In practice, this is quite a hurdle as it can be difficult to argue that consumers recognise a shape as a distinguishing mark of a particular undertaking. The more closely the shape for which registration is sought resembles the shape most likely to be taken by the goods in question, the greater the likelihood of the shape being devoid of any distinctive character. Ideally, shapes need to depart significantly from the standard or customs of the sector in order to fulfil the essential function of a trademark of indicating a product’s origin.

Trademark protection of three-dimensional marks has often been the subject of case law and legislation. For some recent rulings on three-dimensional marks, please see our articles on the following: KitKat, Rubik’s Cube and Coca Cola.

Was KNOPPERS able to buck the trend?

This month, the Court of Justice of the EU (CJEU), the EU’s highest court, issued an interesting ruling on the trademark application for the packaging of the KNOPPERS snack (as shown right). The EUIPO’s examiner had refused the application on absolute grounds, because of the absence of distinctive character of the mark applied for in relation to the goods (among others: sweets and chocolate products).

Both the EU’s Board of Appeal (BoA) and its General Court agreed with the examiner’s views.

The BoA was of the opinion that these types of products are everyday consumer goods of which the average EU consumer only has a low level of attentiveness. Moreover, the outlook of the packaging consists merely of a combination of presentational features that are typical of the packaging of sweets. The applicant also did not sufficiently demonstrate that the sign acquired distinctiveness through extensive and/or frequent use.

On appeal, the General Court upheld the BoA’s findings and added that the combination of the colours light blue, white and grey as used on the KNOPPERS packaging, could not fulfil the function of identifying the origin of the (packaging outlook of) products from a particular undertaking and distinguishing those products from those of other undertakings, because this combination of colours is commonly and widely used. The argument that the graphic elements on the packaging represent a snow-covered hill against a blue sky, was not sufficient. The consumer would not recognise these elements as such and would look at it as simple decorative patterns, rather than an indication of origin.

The CJEU ruling

On appeal, the CJEU also agreed with the examiner’s views. Of particular interest was that the CJEU followed the findings of the General Court by applying case law applicable to the question of distinctiveness of 3D trademarks to the 2D packaging of KNOPPERS. This is because – in line with 3D marks and contrary to word- and figurative marks – where a three-dimensional mark incorporates a figurative element not consisting of a sign which is independent of the appearance of the products, but constitutes, in the mind of the consumer, only a decorative configuration, that mark cannot be assessed under the criteria for word and figurative marks which consist of a sign independent of the appearance of the products which they designate. In other words, KNOPPERS packaging is also considered devoid of any distinctive character and therefore cannot be registered as a trademark.

Determining a registration strategy

It is important to determine a registration strategy before introducing new trademarks. Signs that have limited distinctiveness could – in combination with a distinctive element – be eligible for trademark protection. In that case, rights will be acquired on the trademark as a whole. On the other hand, such registrations can fulfil a preventative function in the sense that third parties while undertaking trademark availability searches, will be drawn to the attention that a claim has been set on the trademark. Nonetheless, it is not effective to solely deposit descriptive elements as a trademark with an additional non-distinctive element.