In Austria there is a producer of sweet products famous for its foamy
sweets in the shape of a bomb. The outer form of those sweets was
denied trade mark protection back in 1976 since their bomb form is
technically the best way to produce such sweets out of sweet foam. In
1969 the producer also applied for trade marks for a transparent
packaging with specially designed compartments for the individual foamy
sweets, one without such sweets and one filled with them, claiming trade
mark protection for the specific three-dimensional form. This so-called
six pack consists of two rows of three compartments each. The marks
were so registered. The producer has since sold five million of such
packages per year and has a market share for that type of sweet of 80%.
A competitor sells similar foamy bombs in identical packages, but
with 12 compartments in two rows of six. The producer sued for
infringement of its six pack trade mark, also asking an interlocutory
injunction. Although the first instance court refused the interim
injunction, the second instance granted it and the Austrian Supreme
Court (OGH) has now confirmed (May 11 2012) that, saying the assumption
that the packaging with 12 compartments is a mere variation of the
famous six pack is obvious.
Of general importance was the answer to the contention that these
packaging trade marks were invalid since they "consist exclusively of
the shape which results from the nature of the goods themselves" (Art 3
para 1 lit e(i) EU Harmonisation Directive). The OGH pointed to the fact
that the Court of Justice of the EU (CJEU) has already clarified (in
the Henkel case) that the packaging can only be held as a result
of the shape of the goods if the goods themselves have no form, such as
powders or liquids. Here, the foamy sweets have their own shape, namely
bomb form, so that this rule does not apply.
This is so even when OHIM might be (wrongly?) of the opinion that
this ground for invalidity should under certain conditions also apply
when the goods are not amorphous. But even if this were correct, it
would not lead to invalidity here. This reason for invalidity does only
apply when the essential characteristics of the shape serve a technical
function. In the present case, the packaging is transparent.
Transparency here is an essential feature that is not dictated by
function.
The only possibility of invalidity here would be lack of
distinctiveness, which can be the case with packaging. However, the six
pack is well known in Austria and had achieved that status before the
defendant came onto the market with his copy. Although this secondary
meaning does not date back to the application date of the trade marks,
the plaintiff is protected by the law against unfair competition, which
protects used marks with secondary meaning.
Some may have thought that only very fancy packaging is protectable. This case interpreting the CJEU Henkel
decision clearly shows that this is not the case when the goods have
their own shape and distinctiveness is acquired through secondary
meaning.
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| Helmut Sonn
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SONN & PARTNER Patentanwälte
Riemergasse 14
A-1010 Vienna
Austria
Tel: +43 1 512 84 05
Fax: +43 1 512 98 05
office@sonn.at
www.sonn.at