In its judgment of 7 July 2017, the Russian IP Court sided with G.H.MUMM (“MUMM”) and accepted a distinctive shape of a bottle for registration as a three-dimensional trademark for goods in class 33.
As is the case for most countries, Russia prohibits the registration of marks that represent the shape of the goods, or the shape of packaging for the goods, where the shape is determined exclusively or mainly by functional purpose. (Article 1483(1)(4) of the Russian Civil Code.) Accordingly, to acquire trademark protection for a shape, an applicant must show that the shape has an inherently original design that gives the mark distinctiveness, or that the shape has acquired distinctiveness through intensive use.
In 2016, the Russian Patent and Trademark Office (“Rospatent”) rejected an international registration claiming the shape of a bottle as a mark, and granted protection only for figurative elements displayed on that bottle. MUMM appealed against this decision to Rospatent’s Chamber of Patent Disputes, arguing that a red ribbon that is laser-etched in a spiral on the surface of the bottle gives the shape of the bottle a unique and special appearance that distinguishes the applicant’s goods from similar goods of other manufactures.
The Chamber of Patent Disputes dismissed that argument and held that the concavity of the red ribbon is barely visible, so that this red ribbon does not form an original shape of a bottle. Thus, a red ribbon can only be protected as a figurative element displayed on a bottle.
MUMM then appealed against the Chamber’s decision to the Russian IP Court, which overruled that decision, finding that MUMM created a new design for its bottle for the specific purpose of distinguishing it from similar goods of other manufacturers. MUMM laser-etched the red ribbon onto the surface of the bottle in order to increase its distinctiveness. The court held that this red ribbon forms a unique and special element of the bottle’s shape and, as such, must be protected as a shape element and not just as a figurative element. Since according to Rospatent’s decision the shape of a bottle was rejected without any exception (such as a shaped red ribbon), the court ordered Rospatent to re-consider its decision. The Presidium of the IP Court confirmed that decision. Interestingly, even during the court hearings, Rospatent agreed that a red ribbon that is laser-etched in a spiral on the surface of the bottle is indeed distinctive, and in its final decision of 5 December 2017 granted protection for the three-dimensional trademark without any disclaimer for the shape of the bottle.
Since recently, Rospatent has taken a course towards a stricter approach to distinctiveness of bottle shapes, making it harder to register them as trademarks. This decision sets a positive precedent for drinks producers willing to protect their unique bottle designs as a valuable asset on a highly competitive market.