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Distinctiveness of three-dimensional trade marks

Based on a study of data in the Darts-IP case database, Donatienne Moreau and Ioanna Diakomichali review trends on distinctiveness of 3D trade marks in European cases at appeal level

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Three-dimensional trade marks consisting of product shapes or packaging are registrable in theory but often hard to obtain in practice. In the European Union, there have been many cases both in the European system and in national courts. Many of these applications are in the food, beverage, cosmetics/household products and pharmaceutical industries, and so it is worth analysing cases in these sectors in more detail. Doing so, we can detect tendencies in the chance of reversing an examiner’s refusal for registering a three-dimensional mark. One of those tendencies is that the EUIPO Board of Appeal, when compared to the Swedish Patentbesvärsrätten (appeal body of the Swedish examination decisions), seem less reluctant to reverse the refusal and at least partially accept the trade mark. Germany has a good reversal rate for trade marks covering the cosmetic, pharma and food ­industries.

In theory, three-dimensional trade marks consisting of product shapes or packaging are eligible for registration in Europe, if they fulfil the distinctiveness requirement and if they do not fall within the scope of the functional shapes exclusions, as set by the European legislation.

In practice, though, trade mark offices throughout Europe tend to refuse three-dimensional trade marks, even if some of those are converted into registration once acquired distinctiveness is shown. It is not true, though, that filing for a three-dimensional trade mark systematically starts with a provisional refusal: some are deemed registrable from the very start.

This article aims to give insight into the practice of appeal divisions of trade mark offices throughout Europe, concerning case law on the registrability of three-dimensional trade marks on distinctiveness grounds in the food, beverage, cosmetic and pharmaceutical industries. Those industries appear to be the most popular industries in which protection for three-dimensional trade marks is sought and where a refusal is issued on distinctiveness grounds. Sweden, Germany, the EUIPO and EU General Court were chosen in the sample of discussed IP offices because of the amount of data available for them.

All the data presented in this article are based on decisions between January 1 2000 and June 30 2016, available in the Darts-IP database. More precisely, the statistical data on which the conclusions presented in this article are based cover decisions on refusals of trade mark applications at appeal level. No notices of acceptance were included, as these are not collected by Darts-IP and the article focuses on data of appeal level.

The percentages presented in the bars were rounded up to the nearest whole number. This explains why the addition of the different percentages in one line is sometimes higher or lower than 100%.

The orange colour of the bar charts refers to the percentage of the decisions where three-dimensional trade marks were refused, blue to those accepting three-dimensional trade marks and grey to those with a partial acceptance (whether in one class or in several classes).

The food industry (Nice classes 29 and 30)

The food industry is one of the most popular in which three-dimensional trade mark protection is sought. Foodstuffs are mainly represented in Nice classes 29 and 30 – class 29 covering meat, fish, poultry, cooked fruits and vegetables, jellies and edible oils and class 30 covering coffee, flour, rice, cereals, breads, and confectionery.

The EUIPO Appeal Boards appear to be quite strict in finding distinctiveness of three-dimensional trade marks applied for in classes 29 and 30. More precisely, in 84 % of the cases, the three-dimensional trade marks in question were found to be not distinctive and in 7% partially non-distinctive (either for some goods of the same class or for goods/services of other classes). Finally, in 9% of cases the refusal was completely reversed and the trade marks were registered.

The EU General Court found partial distinctiveness in 15% of cases and no distinctiveness in 85%. Most of the three-dimensional EUTM applications discussed in the case law collected concern the products themselves (not packaging).

In Germany, in 26% of the collected case law, the three-dimensional trade marks were found to be distinctive, in 63% not distinctive and in 11% partially distinctive (either for some goods of the same class or for goods/services of other classes). As for the General Court, the majority of the three-dimensional applications discussed in the case law concern the products themselves.

Three-dimensional trade marks in Sweden were found to be distinctive in 14% of the case law collected, not distinctive in 77% and partially not distinctive in 9%. Most of the three-dimensional trade mark applications discussed in the case law collected concern the products themselves.

The beverage industry (Nice classes 32 and 33)

Applications for registration of three-dimensional trade marks are very popular in the beverage sector, which is covered by Nice classes 32 and 33. Like in the food industry, competition is high and the numerous actors tend to register three-dimensional trade marks with the aim of keeping a monopoly on a specific form of bottle or liquid container in order to ensure a competitive advantage in the beverage sector.

Given the specific liquid form of the products themselves in the beverage sector, three-dimensional trade mark applications always concern the packaging of the products (bottles, containers, etc).

Nice class 32 covers mainly non-alcoholic beverages (such as water, sodas, juices) and beers. Given the diversity of beverages included in this class, the types of three-dimensional trade marks applied for may be quite different.

Nice class 33 covers alcoholic beverages (except beers), including wines, sparkling wines and spirits. In this field of activity featuring more traditional bottles, some producers attempt to distinguish their goods from those of other producers by presenting them in bottles with special three-dimensional features.

The number of cases discussed before the EUIPO concerning refusals of three-dimensional trade mark applications in Nice classes 32 and 33 is relatively high. The chart confirms the difficulty of obtaining registration of three-dimensional trade marks in the non-alcoholic beverages and beer sectors, like in the other sectors, once a refusal is issued. At EUIPO appeal level, 84 % of the decisions discussing registrability of three-dimensional trade marks end up by rejecting the trade mark application. Only 6% of the decisions partially accept registration of the marks, either for part of the goods included in one class or for part of the classes applied for, and 10% of the decisions reverse the refusal in favour of the applicant .

As to the cases brought before the General Court, the percentage of cases accepting distinctiveness of a three-dimensional trade mark goes slightly up to 11%.

In Germany, approximately 57% of the decisions available do not accept registration of three-dimensional trade marks in classes 32 and 33, while 29% grant protection and 14% acknowledge distinctiveness for part of the goods that were covered by the scope of the appeal.

In Sweden, 23% of the cases discussing registrability on the basis of distinctiveness totally accept registration of the three-dimensional trade marks and 8% partially, while 69% refuse to grant protection.

Chart 1: Distinctiveness in Nice classes 29 and 30

Chart 2: Distinctiveness in Nice classes 32 and 33

Chart 3: Distinctiveness in Nice class 3

Chart 4: Distinctiveness in Nice class 5

Cosmetics and household products (Nice class 3)

Many three-dimensional trade marks are filed by undertakings in the cosmetics and household products industry. Three-dimensional trade marks filed in the cosmetics industry vary from containers for makeup to perfume bottles, bottles of shampoo and for liquid soaps as well as the products themselves (such as soap bars). As to the household products, the three-dimensional trade marks applied for cover the products themselves or the containers and bottles for detergents for example. The case law in Europe covers many cases relating to applications for three-dimensional shapes of detergent tablets.

The statistical data available in chart 3 confirm the general trend of acceptance/refusal rate of three-dimensional trade marks in Europe.

At the European level, the EUIPO Board of Appeal refused to acknowledge distinctive character in 94% of the appealed cases concerning the three-dimensional trade marks applied for in Nice class 3. Only 2% were accepted and 4% partially accepted.

As to the cases appealed before the General Court, 7% of the three-dimensional trade marks were considered distinctive, 13% were partially accepted and 80% judged not distinctive.

In Germany, the cases where protection was granted (26% of cases) are mostly older cases of containers for soap or shampoo. The more recent case law in Germany follows the general trend of the case law at European level.

Sweden shows a more favourable case law of distinctiveness for these trade marks since approximately 22% of the cases grant protection and approximately 9% partial protection against approximately 69% of refusals.

The pharmaceutical industry (Nice class 5)

As trade marks can be a highly valuable business asset, it comes as no surprise that the pharmaceutical sector is one of those with the highest numbers of three-dimensional trade mark applications. In terms of trade mark applications/registrations, the pharmaceutical field is mainly represented in Nice class 5, which includes pharmaceuticals and other preparations for medical or veterinary purposes.

The Board of Appeal of EUIPO seems to be quite flexible in accepting distinctiveness. In fact, distinctiveness was found in 12%, partial distinctiveness in 2% and no distinctiveness in 86%. Few of those decisions were appealed before the General Court but those who were ended up with a refusal of the three-dimensional trade marks on distinctiveness grounds. The refused applications in front of the European instances seem to concern more the products themselves than the packaging of the products.

Germany appears to be the most favourable of all countries included in the data, in finding distinctiveness of three-dimensional trade marks in class 5. More precisely, distinctiveness was found in approximately 29% of the cases collected, partial distinctiveness in 29% and no distinctiveness at all in 43%. The applications in question concern both the products themselves and the packaging of the products with a slight preference to the products themselves.

In Sweden, none of the three-dimensional applications managed to be registered once the refusal got to the appeal level.

Low chances of success

The criteria for assessing the distinctive character of three-dimensional marks consisting of the appearance of the product itself are not different from those applicable to other categories of trade mark. Nonetheless, the statistical data show that chances for applicants to overcome refusals of three-dimensional trade marks at appeal level are, depending on the Nice class, quite low. The reason is 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 itself or of a packaging as it is in the case of word marks or figurative marks. Average consumers are 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 is therefore more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark (Develey Holding & Co Beteiligungs/OHIM, C-238/06 P, October 25 2007).

When a shape (of a good or packaging) for which registration is sought resembles the usual shape of such kind of product or packaging found on the market, that shape will most likely be considered by the trade mark offices as being devoid of distinctive character (see Mag Instrument/OHIM, C-136/02 P, October 7 2004). Such three-dimensional marks will have better chances of registration when they depart significantly from the norm or customs of the sector (see Deutsche SiSi-Werke/OHIM, C-173/04 P, January 12 2006). A shape that is particularly unusual for the goods for which registration is sought, or shapes with particular features such as colours, combinations of colours, distinctive figurative or word elements, will be more likely considered distinctive by the trade mark offices.

Another means of obtaining registration of a three-dimensional trade mark is by proving the distinctive character acquired through use, provided that the shape in question does not fall under the exclusions of Article 4(1)(e) of the Harmonisation Directive 2008/95, in other words, signs which consist exclusively of the shape resulting from the nature of the goods themselves, which are necessary to obtain a technical result or which give substantial value to the goods.

In general, we noted that in Germany there was the highest reversal rate for examiner's refusals when it comes to three-dimensional trade marks, all classes being considered. German is followed by Sweden and then the European instances.

Donatienne Moreau   Ioanna Diakomichali

© Donatienne Moreau and Ioanna Diakomichali. The authors are both legal coordinators at Darts-IP. The data on which this article is based is extracted from the Darts-IP case database


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