Shape of Two Packaged Goblets Held to Lack Distinctive Character

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Published in “WTR Daily”, part of World Trademark Review, in October 2014

In Giorgis v Office for Harmonisation in the Internal Market (OHIM) (Case T-474/12, September 25 2014), the General Court has upheld a decision of the First Board of Appeal of OHIM dated July 26 2012, in which the latter had dismissed an appeal filed by the applicant for a three-dimensional (3D) trademark against a decision of the Cancellation Division finding that the mark was devoid of any distinctive character and that the applicant had failed to demonstrate that the mark had acquired distinctive character through use.

On November 11 2009 Mr Giorgio Giorgis was granted registration of the 3D trademark pictured below for “ice, flavoured ices, mixed sorbets, ice sorbets, ice creams, ice-cream drinks, ice-cream goods, ice-cream desserts, semi-frozen desserts, desserts, frozen yoghurt, pastry” in Class 3 of the Nice Classification.

On January 19 2010 the intervener, Comigel SAS, filed an application for a declaration that the mark was invalid.

Before the General Court, the applicant alleged, among other things, that the Board of Appeal had assessed the relevant public’s level of attention incorrectly. He argued that the average consumer of ice creams displays a high level of attention, given that his/her choice is made based on various factors, such as:

  • the flavour of the ice cream;
  • the way in which it is consumed;
  • the various kinds of ice creams; and
  • the possible presence of certain ingredients.

In contrast, the court found that ice creams are inexpensive everyday consumer food products, which are aimed at all consumers, and the purchase of which is not being preceded by a lengthy period of reflection. The fact that the average consumer chooses an ice cream on the basis of his/her tastes and preferences does not confer a high level of attention on him/her.

The court thus considered that the distinctive character of the mark was to be assessed by taking into account the presumed expectation of an average consumer, who is reasonably well informed and reasonably observant and circumspect.

As to the criteria for assessing the distinctive character of the mark, the court found that average consumers are not in the habit of making assumptions about 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. It could therefore prove more difficult to establish distinctive character in relation to a 3D mark than in relation to a word or figurative mark.

The court further noted that only a mark which departs significantly from the norm or customs of the sector, and is thereby liable to fulfil its essential function of indicating origin, is not devoid of any distinctive character.

With regard to 3D marks consisting of the packaging of goods, which are packaged for reasons linked to the nature of the product, the court held that they must enable the average consumers of the goods in question to distinguish the product concerned from those of other undertakings without conducting an analytical or comparative examination and without paying particular attention.

The contested mark consisted of the shape of two glass goblet-shaped transparent containers and the shape of a cardboard casing with openings at the top and on the sides and which followed the contours of the containers.

The court agreed with the Board of Appeal that the shape of the containers did not depart substantially from that of cups already on the market, which was supported by the evidence provided by the intervener. Therefore, the court considered that the mark was devoid of any distinctive character.

Further, the court considered that the acquisition of distinctive character through use requires that at least a significant proportion of the relevant public identifies the goods or services concerned as originating from a particular undertaking. The evidence provided by the applicant in this respect related to only eight member states of the European Union, and the court considered that this did not demonstrate that distinctive character had been acquired in a substantial part of the European Union.

Moreover, it found that the applicant had not proved that the contested mark had been perceived as a designation of the origin of the goods, on account of the fact that the shape of the packaging had always been used in conjunction with the sign LA GELATERIA DI PIAZZA NAVONA printed on that packaging.

For all the above reasons, the court upheld the decision of the Board of Appeal.

This decision is interesting in respect of the court’s assessment of the distinctive character of a 3D mark, as well as the relevant public for mass-consumption food products – the court reiterated that, for such goods, the consumers’ level of attention is not regarded as being high.

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