Successfully applying for and registering a three-dimensional mark is extremely challenging, says Sarah Cannataci
Are trademarks limited to the two-dimensional plane? Recent judgments indicate that having a three-dimensional mark that satisfies all the applicable relevant criteria may be easier said than done.
In its very essence, the scope of a trademark is to distinguish the products or services of one business from another. A trademark in itself, must therefore contain a normally distinctive component, as a low degree of distinctiveness would increase the likelihood of confusion on the part of the public. This discussion becomes even more complex when considering a three-dimensional trademark.
It is a general principle that a 3D mark which is composed of a form that is generally recognised by the public as a shape, that does not go beyond the scope of the shape of the designated product, is deemed to be lacking distinctiveness.
This is evident in Coca-Cola v OHIM, Case T-411/14 of February 2016, wherein the General Court of the European Union rejected a three-dimensional trademark application for a “contour bottle without fluting”, on the basis that the trademark proposed was merely a modification on the shape of a normal bottle.
This issue of distinctiveness of 3D trademarks was also the subject of Case T-611/17 in the names of All Star CV v EUIPO, which was decided earlier this year. The plaintiff, All Star, known for its goods, especially footwear, marked under ‘Converse’, had originally successfully registered a three-dimensional trademark of the sole used in the majority of its footwear with the European Union Intellectual Property Office (EUIPO), on January 12, 2010. The mark was registered in Classes 17, 25 and 35 of the Nice Classification, all relating to footwear and shoes.
In its very essence, the scope of a trademark is to distinguish the products or services of one business from another
Cancellation proceedings were brought by Carrefour Hypermarchés in March 2011 and the Cancellation Division of the EUIPO decided in favour of Carrefour Hypermarchés in 2014. All Star subsequently appealed arguing that the mark not only had inherent distinctiveness, but also acquired distinctiveness. The board of appeal handed down its decision in 2017, basing its reasoning on the principle that in 3D trademarks, the test for distinctiveness is how significantly the mark in question departs from the customs of the sector. As part of its analysis, the board examined the vertical and horizontal lines and series of diamond shapes in the mark and compared the same to other footwear products (as listed on the retail website www.zalando.com, which had been relied upon by All Star in its pleas), in order to assess the distinguishable features of the same. It held that the use of thread patterns and geometric shapes in soles was common, and neither was the pattern in question remarkably particular or complex. It also stipulated that the patterned sole would be deemed solely by consumers to have a functional purpose tied to the scope of the goods themselves, that is to provide comfort and further grip to the shoe.
The decision taken this March by the General Court of the European Union was on the appeal All Star filed from the board’s decision. The General Court upheld the board’s reasoning on inherent distinctiveness and delved more deeply into the notion of acquired distinctiveness.
The Court held that 3D mark could not be deemed to be individually distinct as it was habitually accompanied by traditional trademarks indicating the brand. The Court also stipulated that in considering whether the mark had acquired distinctiveness, consideration should be made of the consumer perception of the mark, but there should be a balance between the perception of the general public and the specialised public. All Star had only brought data and statements from industry professionals, which did not adequately represent the understanding of the mark by the average consumer and therefore did not contribute fully to the examination of acquired distinctiveness.
This judgment comes after a string of decisions in which specific marks were held to be devoid of distinctiveness, and it reinforces the notion that successfully applying for and registering a three-dimensional mark is extremely challenging. The test, as enshrined in the joined cases C-344/10 P and C-345/10 P Freixenet SA v OHIM, for fulfilling the function of indicating origin is, whether the mark “departs significantly from the norm or customs of the sector”.
The courts’ hesitation seems to linger on the fact that the majority of applications are submitted by big names in enterprise after the appearance of their goods (sold under a well-known trademark) become popular, and the applications serve only as an attempt to stop other parties from selling products of the same appearance, despite the shape of the goods themselves never being inherently distinctive.
In the local scene, the successful registrations of three-dimensional marks with the Industrial Property Registrations Directorate relates almost exclusively to shape marks of perfume bottles and beverage bottles, however 2019 filings also include applications for handbags and belt buckles by leading retail manufacturers and interestingly, cigarette cartons.
We are yet to see whether the IPRD will deem these marks to have significantly departed from the customs of the relevant sectors, and although this test may be quite laborious, it seems all the more justifiable.
Sarah Cannataci is an associate at Fenech & Fenech Advocates specialising in intellectual property law and information technology law.