European General Court: Distinctiveness of the Shape of an Amphora with a Bulge

The European General Court (GC) – quite surprisingly – overruled a decision of the European Union Intellectual Property Office (EUIPO) Board of Appeal with its decision dated 3 October 2018 and ruled that the 3D mark showing the shape of a common amphora, but having a bulge, does not lack distinctiveness and is, therefore, registrable.


                                      Applicant’s/claimant’s EUTM application no. 014886097 (3D mark)


  1. Background of the case


On 7 December 2015, the German company Wajos GmbH filed an application for registration of EU Trademark No. 014886097 (3D mark) for a variety of goods in classes 29 and 30 (both foodstuffs, of animal and plant origin, as well as vegetables), 32 (non-alcoholic beverages and beer) and 33 (alcoholic beverages, except beer). The application claimed priority of national German trademark registration no. 30 2015 103 356 (3D mark), which was applied for on 11 June 2015 and registered on 19 August 2015 without being provisionally refused by the German Patent and Trademark Office (GPTO). However, the German company Laux GmbH, which is a competitor of Wajos GmbH, had filed an application for cancellation of the German priority registration due to absolute grounds with the German Patent and Trademark Office – obviously without success, as the German priority mark is still 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 its middle and being tapered in its lower part.


The EUIPO objected to the registrability of the 3D mark and outlined that the sign is not distinctive, in particular, since the addressed public will perceive the sign as a whole only as packaging of the offered products and the bulge only as a functional detail of this packaging, since this bulge is intended to fix the bottle when being placed in a holder. Also, the EUIPO Board of Appeal confirmed the finding of the first instance. During the proceedings before the Board of Appeal, also a third party filed objections, namely the German Laux Gmbh, which was the Applicant of the request for cancellation of the German priority mark of the EU trademark at issue (see above). Laux GmbH argued in principle that the sign showing a shape of a bottle containing a bulge has to be kept freely available for competitors. While the Board of Appeal at least indicated to some degree that the existence of the bulge might have a certain peculiarity, they came to the conclusion that the overall sign is not more than the sum of its undistinctive parts.


  1. Ruling by the European General Court


Wajos brought the matter to the European General Court, claiming a violation of Article 7 (1) (b) of Council Regulation (EC) No. 207/2009. It argued that particularly the bulge contained in the middle part of the shape of the bottle is catchy and notably not merely functional, since it is not necessary for the storage of the products contained in the bottle. Further, the addressed public is, according to Wajos, used to other shapes as standards for packaging of the goods in question, namely, coated cartons, glass bottles, aluminum cans and glass pots.


While the GC did not completely follow Wajos’ arguments, the judges found in the end that the EUIPO Board of Appeal has perceived the features of the mark and its nature in an inappropriate way. In particular, the Board of Appeal has, according to the GC, neglected the overall impression given by the mark. The GC outlined that the combination of the elements of the shape applied for could not be considered entirely common in the view of the addressed public, which could, in particular due to the eye-catching bulge, distinguish the amphora shape of Wajos from the types of bottles which are usually available on the market. The bulge would, hence, lead to an overall characteristic combination of the presentational features of the mark applied for by Wajos. Accordingly, the GC came to the conclusion that the applied for 3D mark encompasses the minimal level of distinctiveness.


  1. Remarks


The present decision is in a way astonishing as it seems contradictory to settled case-law, where the European Court of Justice (ECJ) has established the principle that only a mark which significantly departs from the norm or customs of the sector is not devoid of distinctive character (ECJ of 12 February 2004, C-218/01 – Henkel) and, with specific reference to the shape of a product packaging, has confirmed that the mere fact that a shape is a variant of a common shape of a particular type of product packaging is not sufficient to establish its distinctiveness (ECJ of 7 October 2004, C-136/02 P – Mag Instrument). Also jumping into the role of an average consumer instead of a trademark law practitioner, it seems questionable whether one would actually see an indication of origin in an amphora containing a bulge instead of a common packaging containing a mere functional feature.


For a better insight on this topic, please read the whole decision here.