On 25 October 2007, the European Court of Justice (ECJ) gave its ruling in Develey Holding GmbH & Co. Beteiligungs KG v OHIM, [2007] C-238/06 P and confirmed the importance of distinctiveness for the registration of a three-dimensional shape as a trade mark.

Develey applied to register a three-dimensional sign in the shape of a bottle as a Community trade mark The mark had already obtained registration in Germany. However, both the Examiner and the Board of Appeal of The Office of Harmonization for the Internal Market (OHIM) rejected the application on distinctiveness grounds and the Court of First Instance (CFI) upheld the refusal.

Develey contested that decision before the ECJ claiming, inter alia, a breach of Article 6 of the Paris Convention and Article 2(1) of the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). Nevertheless, the Court held that those international agreements were not directly applicable and decided to examine the grounds of appeal only in the context of the Trade Marks Regulation No 40/94.

Develey argued that the CFI had failed to apply Article 74(1) of the Regulation, according to which OHIM must examine the facts of its own motion and establish whether or not a mark is distinctive. The ECJ, however, established that the burden of proof is on the Applicant to provide specific and substantiated information to show that the trade mark applied for has either an intrinsic, distinctive character or a distinctive character acquired by use.

Develey also submitted that, by endorsing that the mark applied for was not distinctive, the CFI had, in essence, invalidated its earlier national registration. The ECJ rejected that argument and stated that neither the validity, nor the protection, of the mark in Germany had been affected. It further confirmed that the Community trade mark regime is an autonomous system and applies independently of any other national system.

Finally, Develey alleged that the Court of First Instance, in assessing the overall impression produced by the bottle, had failed to examine its flattened and wide body which contributed considerably towards its distinctive character. The ECJ held that, in the examination of the individual features of the get-up of a mark, an applicant cannot demand to determine the order in which that examination takes place, the level of detail to which each feature is examined, or the terms used. In any case, even if one of the mark’s features could be considered unusual, alone it was not sufficient to influence the overall impression given by the mark and did not automatically confirm that the mark was distinctive.

The case is significant because it confirms that the distinctiveness criterion is crucial for the registration of threedimensional shapes as Community trade marks. The current approach adopted by the courts is that only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin, is not devoid of any distinctive character. This is true, even if the mark has already obtained national registration, since the European system is autonomous and can thus consider distinctiveness on different grounds.