CJEU confirms registrability as an EUTM of a bottle that takes the shape of an amphora

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CJEU confirms registrability as an EUTM of a bottle that takes the shape of an amphora

Let’s understand the case first.

German company Wajos GmbH on 7 December 2015, applied for registration of European Trademark No. 014886097 (a 3D mark) for a variety of goods produced in classes of 29 and 30. The application claimed registration number given by German trademark is 30 2015 103 356 (3D mark), which was applied on 11 June 2015 and get registered by 19 August 2015 without any provisionally, which is refused by the GPTO.

However, Laux GmbH is a German company, and they are the competitor of Wajos GmbH. They had applied for cancellation of the German priority registration due to absolute grounds with the German Patent and Trademark Office. Of Course, without success, as the German priority mark is registered, and the register does not indicate a pending cancellation proceeding.

The sign in question consists of the shape of a bottle containing a bulge in the middle and tapered in its bottom area.

EUIPO objects the registrable of the 3D mark and mentions that the sign is not distinctive. Since addressed public will perceive flag as a whole only as of the packaging of the offered goods, and the bulge becomes only a functional detail of this packaging since this bulge intended to place the bottle in a holder. Moreover, the EUIPO Board of Appeal stated the finding of the first instance.
In the time of the proceedings before the Board of Appeal, even a 3rd party filed objections, namely the Laux Gmbh, which was the Applicant of the request for cancellation of the German priority mark of the EU trademark in dispute (see above). Laux GmbH argued in theory that the sign showing a shape of a bottle containing a bulge has got to be kept freely available for competitors. EUIPO Board Appealed a minimum of indicated to the point that the existence of the swelling may need a peculiarity, they concluded that the general sign isn’t quite the sum of its undistinctive parts.

Ruling by the EU General Court

Wajos brought the interest of the EU General Court, claims violation of Article 7 (1) (b) of Council Regulation (EC) No. 207/2009. It argues that particularly the bulge contained within the middle a part of the form of the bottle is snappy and notably not merely functional since it’s not necessary for the storage of the products included within the container. Further, the addressed public is, consistent with Wajos, won’t to other shapes as standards for packaging of the products in question, namely, coated cartons, glass bottles, and glass pots.

While the GC didn’t wholly follow Wajos’ arguments, the judges found within the end that the EUIPO Board of Appeal has recognized the features of the mark and its nature in an inappropriate way. Notably, the Board of Appeal has, consistent with the GC, neglected the general impression given by the score. The GC outlined that the mixture of the weather of the form applied for couldn’t be considered entirely familiar within the view of the addressed public, which could, mainly, thanks to the catchy bulge, distinguish the amphora shape of Wajos from the kinds of bottles which are usually available on the market. The swelling would cause an overall characteristic combination of the presentational features of the mark applied by Wajos. Accordingly, the GC came to the result that the used for 3D mark encompasses the slightest level of distinctiveness.

Points to be considered 

The present settlement is astonishing because it seems contradictory to settled case-law, where the ECU Court of Justice (ECJ) has confirmed the principle that only a mark that significantly departs from the norm or customs of the world isn’t barren of character. (ECJ of 12 February 2004, C-218/01 – Henkel) and, with particular regard to the form of a product packaging, has confirmed that the mere fact that’s how could be a variant of a typical sort of a specific kind of product packaging isn’t sufficient to determine its distinctiveness (ECJ of seven October 2004, C-136/02 P – Mag Instrument).
Also, jumping into the role of a mean consumer rather than a trademark law practitioner, it seems questionable whether one would see a sign of origin in an amphora containing a bulge rather than a regular packaging containing a mere functional feature.

It is best to understand points filling patent trademark is to discuss with the expert and with the other who have similar rights. You can also join the conference and meeting where you can review the terminologies of countries and states to file an application. Various international conferences happen in a year where you can look for IIPLA (International Intellectual Property Law Association), where you can meet numbers of a quality expert from all around the world who can help you out in a terrible situation.


You can visit events.iipla.org to learn more about the upcoming conference.

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