On 24 February 2016, the General Court of the European Union held that Coca-Cola’s 3D bottle shape mark lacked the distinctive character required in order for it to be registered as a Community Trade Mark ("CTM"). The decision will come as a disappointment to Coca-Cola as it has a trade mark for its glass bottle which is in use since 1916.
The business impact of the decision is as follows:
- The shape of product packaging, in the absence of any brand indication, may not be successfully registered as a trade mark unless it departs significantly from the standard packaging of the relevant goods.
- Applicants should ensure that, where distinctiveness may have been acquired through use, comprehensive research and surveys are conducted prior to the filing of the application.
- Any evidence relating to sales or investment figures should be specific to the mark in question and not relate to other marks held by the applicant.
In 1986, the UK House of Lords refused to grant UK national trade mark registration for the shape of Coca-Cola’s glass bottle which had been used for 70 years by that point. The application for registration was initially made in January 1976.
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At that time, UK law did not allow for the registration of the 3D bottle which Lord Templeman perceived to be “another attempt to expand the boundaries of intellectual property and to convert a protective law into a source of monopoly”. Coca-Cola had, however, previously registered a line drawing of a Coca-Cola bottle as a trade mark in Ireland in 1956. An equivalent mark had been registered in the UK since 1959.
Many years later, in 2016, Coca-Cola continue to lodge applications for the registration of their bottle shapes which, it argues, cause the public to make a direct and immediate connection to the Coca-Cola brand.
Subsequent changes to trade mark law and the introduction of the Community Trade Mark has allowed Coca-Cola to successfully register its ‘Glass Contour Bottle’ under CTM No. 2754067 in February 2005. In December 2011, it filed an application to register a further 3D shape mark entitled ‘The Contour Bottle Without Fluting’.
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Lack of Distinctive Character
The General Court held that the CTM application fell within the absolute grounds for refusal provided in Article 7(1)(b) CTMR (Regulation 207/2009) which states that trade marks which are devoid of any distinctive character shall not be registered.
The Board of Appeal had originally held that the mark applied for did not possess distinctive character as “the features of the applicant’s sign do not make it depart significantly from the norms or customs in the sector of the contested goods” and the General Court agreed with this view.
Coca-Cola sought to rely heavily on the successful registration of its earlier glass bottle shape mark. In particular, it claimed that the mark applied for was an evolution of (and, therefore, would be directly associated with) their famous iconic glass bottle mark. The Board of Appeal listed a number of visual differences between the two bottles such as the presence of fluting and the narrower neck and base on the earlier bottle. Overall, it found that the mark being applied for did not create “an impact which allows the relevant public clearly and unmistakeably to link it with the Coca Cola iconic bottle.”
The Board of Appeal considered there to be nothing unusual or fanciful in the design of the bottle and that in the absence of the ‘Coca-Cola’ label, the sign at issue will not be associated by the consumers with the applicant. The General Court upheld this decision, holding that “the mark applied for is made up of a combination of elements, each of which is likely to be commonly used in the trade of the goods covered by the trade mark application and is therefore devoid of distinctive character in relation to these goods.”
In a previous decision concerning Nestlé, Article 7(1)(b) was also relied upon by OHIM in rejecting an application for registration of a 3D plastic bottle filed by Nestlé Waters France in 1998. However, in 2003, the Court of First Instance (what is now the General Court) ultimately reversed this decision holding that certain elements of the mark such as the bottle's bobbin-like shape and the oblique, horizontal grooves were truly specific and could not be regarded as altogether commonplace.
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Contrary to the decision in Nestlé, the Board of Appeal in the Coca-Cola case was of the view that the end consumer of the category of products concerned will primarily perceive the form and design of the package, at the most, as decorative and not as a sign indicating the origin of those products. It further noted that certain features of the contested bottle, such as the curves, may even be perceived as being functional (i.e. to facilitate handling or grip).
Acquiring Distinctiveness through Use
Article 7(3) of CTMR provides that a lack of distinctive character objection will not apply to prevent registration where the mark has acquired distinctiveness through use in relation to the designated goods and services. Coca-Cola claimed that because of the widespread and intensive use in the EU, the sign for which registration was sought had acquired distinctive character. However, the General Court rejected this argument.
It was held that 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 through the use made of it. Coca-Cola’s application was filed in December 2011, whereas the customer surveys submitted were conducted in 2012. The surveys submitted were also conducted in only ten Member States even though the EU had 27 Member States at the date the application was lodged. The General Court held that the results of those surveys could not be extrapolated to the 17 Member States in which no survey was conducted and were, therefore, not sufficient to prove that the mark had acquired distinctiveness. The Court of Justice has previously held that a CTM must have acquired distinctiveness in each country in which it could be considered devoid of distinctive character, in this case the entire EU.
Although investment in advertising and communication can generally be taken into consideration for the purpose of considering whether a mark has acquired distinctive character through use, the General Court found that the evidence put forward by Coca-Cola did not specifically relate to the mark applied for and, therefore, no conclusions could be drawn in that regard. In addition, the sale figures submitted by Coca-Cola contained certain inconsistencies which it failed to explain and the General Court held that the evidence had no probative value.
In conclusion, the General Court held that the evidence was “insufficient and unconvincing as regards the actual perception of the mark applied for” and dismissed the appeal.
The up-hill battle of bottle registration
The General Court ultimately held that the bottle mark applied for did not possess the necessary distinctive character and, therefore, could not proceed to registration.
It is open to Coca-Cola to appeal the decision to the Court of Justice and so a further decision may be expected in due course.
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This is not an uncommon judgment in relation to applications to register the 3D shape of bottles as trade marks. In 2005, the CJEU refused the registration by Corona of a mark for lacking distinctive character which was made up of the three-dimensional shape and colours of a transparent bottle, filled with a yellow liquid, having a long neck in which a slice of lemon with a green skin has been plugged.