In Voss of Norway ASA v OHIM [2013] T-178/11, the EU General Court upheld a decision by the Office of Harmonization for the Internal Market (OHIM) Board of Appeal finding that a three-dimensional Community trade mark for a bottle was registered invalidly, because it was devoid of distinctive character.

BACKGROUND

Voss is a brand of Norwegian premium bottled water, sold in a cylindrical glass bottle with a silver cap of the same diameter as the bottle, for which Voss obtained a three-dimensional Community Trade Mark (CTM) registration covering alcoholic and non-alcoholic drinks (including water) in 2004. In 2008, Nordic Spirit AB, which markets vodka in a similar cylindrical glass bottle with a silver cap of the same diameter as the bottle, contested the validity of the mark under Article 7(1)(b) of CTM Regulation 207/2009/EC. OHIM’s Cancellation Division rejected the invalidity action, holding that the shape of the mark was uncommon and diverged significantly from existing bottles in the beverages market and could therefore function as a trade mark.

The decision was annulled by the First Board of Appeal, which considered that beverages are always sold in bottles, cans or other forms of packaging that are marked with "a label or a verbal or graphic sign", and consumers would first look at the label in order to identify the origin of the product. The Board of Appeal also considered the mark to be similar to beverage bottles already on the market. Voss applied to the General Court to annul the Board of Appeal’s decision.

DECISION

The General Court agreed with the Board of Appeal that the shape of Voss’ bottle could not be regarded as departing significantly from the norms and customs of the beverages sector. The vast majority of bottles available on the market have cylindrical sections so the average consumer would naturally expect beverage bottles to have that shape. While the diameter of the non-transparent cap was "somewhat original", it could not be considered to depart significantly from the norms and customs of the sector, as it was well known that many bottles are closed with a cap made from a colour different to the body of the bottle. Voss therefore needed to provide evidence (such as the way in which various features are combined) that the composite mark, taken as a whole, was greater than the sum of its parts. In the General Court’s opinion, no such evidence existed. There was nothing in the component parts of the composite mark that gave it distinctive character.

Voss’ submission that there was nothing to prevent a container that always displays a sign from being identified per se as an indicator of commercial origin was also rejected. The Board of Appeal had not based its assessment of the distinctiveness of Voss’ mark on the marking on the bottle or on the display of the sign "Voss" on the bottle.

The General Court concluded consequently that the Board of Appeal was correct in finding that the mark was devoid of distinctive character and merely a variant of a packaging shape used frequently in the beverage sector.

COMMENT

Although the General Court noted that Voss’ bottle was somewhat original, it stated clearly that even where a bottle was one of a kind, this did not by itself mean that it departed sufficiently from the norms and customs of the sector to confer on it the requisite distinctive character. Consumers would normally look at the label rather than the container to determine trade origin. The Court’s decision suggests that a new bottle shape would need to be drastically different in the relevant field for it to be capable of attracting registered trade mark protection without depicting at least elements of the label in the representation of the mark applied for.