In December 2017, Barcadi & Company Limited ("Bacardi") applied to register the following figurative sign as a European Union Trade Mark (EUTM):
Bacardi sought to register this trade mark (the "Application") for a list of goods in class 33 (Alcoholic beverages except beers) of the Nice Classification.
The EUIPO Examiner (the "Examiner") initially refused registration on the basis that the Application lacked distinctive character. The Examiner noted that it could not be assumed that the average consumer was able to distinguish the origin of goods based off the form of its container. In particular, the Examiner argued that, although the sign for which protection was sought was a figurative mark, it corresponded to the representation of the product itself and that the body of case law relating to the registration of 3D marks was applicable.
The Examiner also noted that the relevant elements of the sign (i.e. the green bottle, wax seal and bright red label) were not considered to be departing from the industry standards to such a significant degree as to warrant the granting of an EUTM since such signs are largely used as decorative badges within the alcoholic beverage industry.
Bacardi appealed this decision, arguing that the principles of equal treatment and sound administration had not been observed by the Examiner. Bacardi contended, in particular, that the EUIPO had in fact previously accepted: (a) registration of several 3D signs that contained characteristics shared in the present application, including signs (i.e. with no name or faint/intelligible lettering); and (b) the following Bacardi EUTM application (which was registered without objection):
Bacardi emphasised that consumers are likely to observe small variations of detail when purchasing alcoholic beverages. Moreover, it was argued that the combination of:(a) the light green colouring (b) a bright red wax seal; and (c) a white label gives the bottle a degree of distinctiveness that satisfies the threshold necessary for trade mark registration.
The Fourth Board of Appeal (the "Board") considered that the question as to whether the combination of elements depicted on the bottle would be distinctive in their graphic appearance, was central to the appeal in question (case R01737/2018-4). The Board acknowledged that, the closer a shape for which registration is sought resembles the shape that the packaging or the product will take, the greater the likelihood of the shape being devoid of distinctive character.
On this occasion however, the Application did not confine itself to the representation of the normal packaging of beverages (i.e. the shape and contours of the bottle). Furthermore, Bacardi did not argue that the shape of the bottle was distinctive, but rather that the elements of the graphic representation (if only in their combination) were not tantamount to the typical appearance of bottle and accordingly were distinctive in their graphic appearance.
On the above basis, the Board found that the overall appearance was not purely decorative and combined to distinguish the bottle from its competitors. As such, the Bacardi bottle was sufficiently distinctive and did not incur the ground for refusal raised by the Examiner. It was determined therefore that the application could proceed to registration.
This decision serves as a reminder to manufacturers seeking to secure IP protection for product packaging that, although it is challenging to register a shape as a trade mark, the various decorative aspects of the packaging can, in combination, meet the standard of distinctiveness necessary to benefit from trade mark protection.
The decision also indicates that the Board is willing to afford a broader protection to product packaging beyond the customary protection available to the words or slogans featured on the product. However, the Board was careful not to let the genie out of the bottle as it noted that the elements for which protection are being sought must still serve to distinguish the goods of the undertaking from those of its competitors.