It is difficult to obtain trade mark protection for sign consisting of a product’s shape. According to a brand-new judgment of the General Court of the European Union it is now also a challenge to genuinely use and thereby maintain such a mark (GCEU, judgment of September 27, 2018, T-219/17 M J Quinlan v. EUIPO/Intersnack).
For many years, the European courts developed a string of case law which makes it very difficult to register trade marks consisting of the (partial or complete) appearance of the product itself. Although the criteria for assessing the distinctive character of such marks are no different from those applicable to other categories of trade marks, the courts stress that the average consumer’s perception is not necessarily the same in the case of a three-dimensional mark consisting of the appearance of the product as it is in the case of a word or figurative mark consisting of a sign which is independent of the appearance of the products it designates. Average consumers were not in the habit of making assumptions as to the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element, and it may therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark. Consequently, the European courts are of the opinion 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 and thus registrable (e.g. CJEU, judgment of May 15, 2014, C-97/12 P Louis Vuitton Malletier v. EUIPO/ Friis Group International, para. 51, 52).
One would think that the validity of a three-dimensional trade mark, which fulfills these strict requirements and is thus a registered, is difficult to challenge later on. However, in its recent judgment, the General Court proved this general assumption wrong. The case concerns revocation proceedings against a European Union Trade Mark consisting of the shape of a kangaroo and claiming protection for potato snacks. The request was based on the allegation that the trademark had not been genuinely used in the preceding five year period. In its judgment, the General Court confirmed a lack of a genuine use although potato snacks with the contested trade mark’s shape had been sold on the market by an alleged licensee of the trade mark owner. The court explained that genuine use requires that the contested mark is used in accordance with its essential function, namely to guarantee the identity of the origin of the product or service designated by the mark to the consumer enabling him, without any possibility of confusion, to distinguish that product or service from others which have a different origin. In the following, the General Court refers to the above-mentioned case law of the European courts, according to which the average consumer normally does not infer from the shape of the goods or the shape of their packaging the origin of the goods. In the Court’s opinion, the fact that the potato snacks were sold in non-transparent packaging that featured additional (verbal and figurative) trade marks and only comprised two-dimensional pictures of the kangaroos prevented the targeted public from perceiving the shape of the kangaroos as an indication of origin. Rather, the average consumer would derive information on the origin of the product first and foremost from the “classical” trademarks dominantly applied to the product packaging. In view of this, the General Court confirmed the decision of the Board of Appeal of the EUIPO, which had ordered the revocation of the trademark for non-use.
The General Court’s new judgment is bad news for undertakings that were able to obtain a three-dimensional trademark for one of their highly original products. When enforcing such marks being registered for more than five years, the attacked imitators will now almost certainly initiate revocation proceedings alleging that the trademark has not been used as an indication of origin. The trademark owner does then not only face the risk of losing in the infringement proceedings but also the trade mark protection for his product shape mark as a whole. In order to mitigate this risk, it is highly recommendable to highlight the individual distinctive function of the product shape on the respective packaging.