The General Court of the European Union has upheld an appeal from the Fourth Board of Appeal of The Office of Harmonization for the Internal Market (OHIM), rejecting an opposition to an application to register the three-dimensional shape of a bottle as a Community trade mark (CTM), based on an earlier Community registration for a bottle shape in respect of identical and similar goods.

BACKGROUND

In 2003, Kofola Holding a.s. filed an application to register a CTM for the bottle below which had the word “snipp” engraved at the bottom, for various classes of goods including coffee, tea and fruit juice.

Weldebrau GmbH & Co KG opposed the application under on the grounds that it was similar to its own trade mark (see below) and registered under similar classes of goods and thus there existed a likelihood of confusion. The Opposition Division originally rejected the opposition in its entirety. Weldebrau appealed and the Fourth Board of Appeal dismissed the appeal, finding that there was no likelihood of confusion due to the average degree of distinctiveness of Weldebrau’s mark and the significant differences between the signs. Weldebrau appealed to the General Court, arguing that the Board had erred in its assessment of a likelihood of confusion between the marks.

DECISION  

In assessing the similarity of the marks, the Court found that, as it was a three-dimensional mark, it could only undertake a visual assessment. As Weldebrau’s mark did not incorporate any wording and the word "snipp" on Kofola’s mark was small and difficult to see, no phonetic analysis could be carried out. No conceptual comparison could be made as the marks did not convey any meaning.

The Court found that the Board had held correctly that there were visually significant differences between the marks. Weldebrau’s mark depicted a longer, slimmer and more delicate bottle shape than that of Kofola’s. Further, although both necks were helical, they had different spirals: the neck of Weldbrau's mark was thinner, with only two helical turns, whereas Kofola's mark was wider and had four helical turns. The actual shape of each neck was different. The Court found, therefore, that there was only a low degree of visual similarity between the marks.

As for the likelihood of confusion, the Court noted that, according to case law, in carrying out a global assessment, a low degree of similarity between the marks may be offset by a high degree of similarity between the goods and vice versa. Despite the fact that the goods were identical and very similar, the Court did not find any likelihood of confusion since Weldebrau’s mark had only an average degree of distinctiveness and it had not submitted any evidence of the mark having acquired increased distinctiveness by virtue of its intensive use or reputation. In essence, Weldebrau was asking the Court to find a likelihood of confusion based on the fact that the two bottle shapes had a spiral neck. However, since there were significant differences between each of the spiral necks, there could be no likelihood of confusion even though the goods were identical and very similar. The Court also held that the consumer would place more importance on a label or logo affixed to the bottle rather than its physical appearance. Weldebrau's appeal was therefore dismissed in its entirety.

COMMENT

Weldebrau had submitted that it had received various prizes for the special design of the bottle, which, it said, confirmed the unique and unusual appearance of its bottle mark. However, this did not, in the Court's view, show that the bottle shape was more than averagely distinctive as a trade mark. It would seem that what might have helped Weldebrau would have been to prove that its mark had acquired more than average distinctiveness through intensive use and reputation and was therefore more powerful as an indicator of origin than any label that might be affixed to it.