The fragrance industry isn’t just about smelling good and paying people to take most of their clothes off and spray you with something as you walk by.

In this market, the way a product is packaged is incredibly important.

Is it not clear – based on years and years of educating consumers – that the shapes of fragrance bottles can function as brands? Dior’s J’Adore and Jean Paul Gaultier’s Le Male bottles provide particularly striking examples (in each case, the word mark is not displayed on the bottle itself).

But how different does the bottle have to be from “the norm” in order to be registered as a trade mark?

The issue was recently considered by Emma Himmsworth QC, sitting as Appointed Person, where she had to determine whether Beauté Prestige International’s UK trade mark application for the fragrance bottle below was sufficiently distinctive in respect of class 3 goods (Case O/092/14, available here).

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The 1st instance decision

Before it got to the Appointed Person, BPI’s application was the subject of a decision from Hearing Officer Whatmough.

Ms Whatmough decided that the mark was objectionable under s3(1)(b) of the UK TM Act, which prohibits the registration of trade marks that are devoid of any distinctive character. This was by reference to a long line of case law around shape marks. Those cases have repeatedly stated that while it is not appropriate to apply stricter requirements when assessing the registrability of a shape mark (as against other categories, like word marks), the average consumer is generally not in the habit of making assumptions about products based on their shape in the absence of any graphic or word element.

Ms Whatmough agreed that consumers would pay special attention to shapes in this particular sector, but considered that it was necessary to show that the shape functioned independently as a mark, without the aid of more obvious trade mark material such as logos and word marks.

BPI argued that the UKIPO’s Registry Work Manual made positive statements around the distinctiveness of fragrance bottle shapes (referring to them as a “customary means” of distinguishing source) but it was held that this did not amount to a presumption of distinctiveness in respect of such bottles.

The shape was considered to represent an unexceptional example of a perfume bottle.

The Appointed Person’s decision

The Appointed Person agreed that the Registry Work Manual could not create a presumption of distinctiveness for such marks. Instead, the Hearing Officer must make a specific assessment as to whether the mark fulfilled the essential function.

It was considered that the shape is distinguishable from others in the market, but not to a degree that made it sufficiently arresting to be regarded as indicative of trade origin from the outset.

The Applicant raised a number of additional arguments. Notably, the Applicant argued that anti-counterfeiting considerations play a role in the assessment for inherent registrability. This was on the basis that perfumes are high value goods that are an attractive target for counterfeiters who often seek to reproduce visual aspects of such marks. This argument was dismissed as having no impact on the assessment of inherent registrability. If the shape was caught by the case law, then anti-counterfeiting considerations could not produce a different result.

The Hearing Officer was entitled to reach the view that she did.

Comment

Shape marks have had a notoriously tough ride through the UK and EU courts. What is difficult to assess is just how different the mark needs to be from the norm in order to be inherently registrable. The decision here seems to be difficult to square with more recent decisions from OHIM’s Boards of Appeal around position marks (for example the Gamp decision which we discussed in our recent note here).

The relevance of anti-counterfeiting strategy is likely to be one for which brand owners have sympathy. This is a key reason for pursuing protection, and there is a circularity here as the likelihood is that the investment in pursuing a trade mark registration would likely (at least in part) reflect the need to protect this element of branding against copying. But this cannot be enough on its own to make a given mark distinctive.

On the other hand, there have been decisions in which the fact that the mark at issue was actually being copied lead to a favourable conclusion in terms of the distinctiveness of the copied mark.

For example, in Case R-2272/2010-2, OHIM’s 2nd Board of Appeal took into account the fact “that there are so many counterfeit ads (2,841 removed from eBay between August 1, 2009 and April 11, 2011) is also an indication that the red sole of the petitioner functions as a trademark”, in allowing registration of Christian Louboutin’s Red Sole mark as a CTM:

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In a US decision, the Trademark Trial and Appeal Board in In re Hershey Chocolate and Confectionary Company (Serial No. 77809223 (June 28, 2012) [not precedential] – here) took into account evidence that the configuration of Hershey’s chocolate bar (shown below left) had been copied by the maker of a brownie tin (shown below right), in finding that the mark had acquired distinctiveness. In the brownie tin, the word “HERSHEY’S” was replaced with “CHOCOLATE”. It was considered that the shape of the brownie tin might have been chosen “because of its powerful association with applicant’s chocolate bars in the mind of the consumer” (Kit Kat, anyone?).

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(Hershey’s shape mark) (brownie pan)

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What about Australia and New Zealand?

We recently discussed shape mark issues in Australia and New Zealand in our note on the Coca Cola v Pepsi shape mark battle in New Zealand (here).

BPI has not applied for this specific mark in Australia or New Zealand. However, BPI has made various applications for bottle shape marks in Australia and New Zealand, with mixed success. The shape mark for the L’eau Bleue D’Issey product was accepted as being inherently distinctive in Australia.

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