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England and Wales Court of Appeal (Civil Division) Decisions
You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Bongrain SA, Re Trade Mark Application  EWCA Civ 1690 (17 December 2004)
Cite as:  RPC 14,  EWCA Civ 1690
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COURT OF APPEAL (CIVIL APPEALS DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
The Hon Mr Justice Pumfrey
Strand, London, WC2A 2LL
B e f o r e :
LORD JUSTICE LONGMORE
LORD JUSTICE JACOB
|IN THE MATTER OF Trade Mark Application Number|
|In the Name of BONGRAIN SA|
Smith Bernal Wordwave Limited, 190 Fleet Street
London EC4A 2AG
Tel No: 020 7421 4040, Fax No: 020 7831 8838
Official Shorthand Writers to the Court)
Daniel Alexander QC (instructed by Treasury Solicitor) for the Respondent
Registrar of Trade Marks
Crown Copyright ©
"An application for a series of two three-dimensional marks. The first mark in the series consists of a three-dimensional shape as shown in the representation on the left hand side of the sheet. The second mark in the series consists of a three-dimensional shape with a "ridged effect" on the surface as shown in the representation on the right. The wording on this sheet does not form part of the marks."
Henkel v OHIM, Joined Cases C-456/01 P and C-457-01 P, 29th April 2004 (rectangular detergent blocks with three coloured layers);
Linde v Deutches Patent-und-Markenamt, Joined Cases C-53-55/01  RPC 45 (shapes of a fork-lift truck, a torch - what the Americans call a flashlight - and a wrist-watch);
Mag Instrument v OHIM, Case C-136/02, 7th October 2004 (torches);
Koninklijke KPN Nederland v Benelux Merkenburea Case C-363/99 12th February 2004 (word "Postkantoor" meaning "post office");
OHIM v Erpo Möbelwerk Case C-64/02/P, 21st October 2004 ("Das Prinzip der Bequemlichkeit" TM – a slogan meaning in English "the principle of comfort" for all sorts of things including furniture, tools, cars and others).
Libertel v Benelux-Merkenbureau, Case C-104/01  FSR 65 (Colour (orange) allowable in principle on proof of actual distinctive character, but a general interest in availability of colour should be taken into account);
Nestlé Waters France v OHIM, Case T-305/02  ETMR 41 p.566 (plastic bottle with spiral wavy grooves and bobbin-shaped upper part). CFI decision;
Henkel v OHIM, Case T-393/02, 24th November 2004 (thin, inverted crystal-shaped bottle). CFI decision.
The Relevant Provisions
"A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings."
Art.3 so far as is material says:
"1. The following shall not be registered or if registered shall be liable to be declared invalid –
(a) signs which cannot constitute a trade mark;
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;
(e) signs which consist exclusively of:
- the shape which results from the nature of the goods themselves, or
- the shape of goods which is necessary to obtain a technical result, or
- the shape which gives substantial value to the goods;
3. A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character. Any Member State may in addition provide that this provision shall also apply where the distinctive character was acquired after the date of application for registration or after the date of registration."
(a) a shape of goods, in principle, may be registrable. So much is made explicit by Art. 2;
(b) the shape of goods will be registrable provided it does not fall within one or more of the criteria set forth in Art. 3.1;
(c) since a shape of goods is in principle registrable, the application passes the first of the criteria in Art.3.1 – it is not a sign which "cannot constitute a trade mark";
(d) the inquiry into "distinctive character" (Art. 3.1(b)) is to be carried out at the date of application for registration – in this case 3rd June 1997;
(e) that inquiry will involve a consideration of the nature of the mark applied for to assess its inherent distinctive character. If that is insufficient, nonetheless evidence may show that at the date of application it has acquired a distinctive character by use (Art. 3.3). In short, has the mark, by nature or nurture a distinctive character? Passing either test will do.
(f) the legal test for "distinctive character" is in principle the same for all types of mark. As the ECJ said in Henkel (detergent blocks) para. 38:
"The Court of First Instance was also correct in stating that the criteria for assessing the distinctive character of three-dimensional shape-of-products marks are no different from those applicable to other categories of trade mark."
The Court was even more explicit on the point in Linde, para. 46:
"As regards Art. 3(1)(b) of the Directive, neither the scheme of the Directive nor the wording of that provision indicates that stricter criteria than those used for other categories of trade mark ought to be applied when assessing the distinctiveness of a three-dimensional shape of product mark."
(g) That legal test was explained by the Court in two important paragraphs in Linde:
"40. For a mark to possess distinctive character within the meaning of that provision it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from products of other undertakings (see Phillips, para.).
41. In addition, a trade mark's distinctiveness must be assessed by reference to, first, the goods or services in respect of which registration is sought and, second, the perception of the relevant persons, namely the consumers of the goods or services. According to the Court's case law, that means the presumed expectations of an average consumer of the category of goods or services in question, who is reasonably well informed and reasonably observant and circumspect (see Case C-210/96 Gut Springenheide and Tusky  ECR I-4657, para., and Phillips, para.)."
(h) As a practical matter, however, it will harder to show that a three dimensional mark passes the test. This is because, in the Court's words in Linde, para 48:
"It is nevertheless true, as the Austrian and UK Governments and the Commission rightly argue, that in view of the test set out in paras  and  of this judgment it may in practice be more difficult to establish distinctiveness in relation to a shape of product mark than a word or figurative trade mark. But whilst that may explain why such a mark is refused registration, it does not mean that it cannot acquire distinctive character following the use that has been made of it and thus be registered as a trade mark under Art.3.(3) of the Directive."
It re-stated this point in paragraphs 38 and 39 of Henkel (detergent blocks):
"38. It [the CFI] none the less observed that, for the purpose of applying those criteria, the relevant public's perception is not necessarily the same in relation to a three-dimensional mark consisting of the shape and colours of the product itself as it is in relation to a word or figurative mark consisting of a sign which is independent from the appearance of the products it denotes. Average consumers are not in the habit of making assumptions about 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 could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark (see, to that effect, Linde, paragraph 48, and Case C218/01 Henkel  ECR I0000, paragraph 52).
39. In those circumstances, the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94. Only a trade mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin, is not devoid of any distinctive character for the purposes of that provision (see, in relation to the identical provision in Article 3(1)(b) of First Directive 89/104, Henkel, paragraph 49)."
Distinctive character from the nature of the mark itself, irrespective of use.
"Only a trade mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin, is not devoid of any distinctive character…"
" ....For the purpose of this appeal, I am prepared to accept that the bottle shape which is the subject of these applications is both new and visually distinctive, meaning that it would be recognised as different to other bottles on the market. That does not mean that it is inherently distinctive in a trade mark sense.
 Mr James came to the conclusion that the average consumer was likely to conclude that the design in the applications was nothing more than a bottle of pretty ordinary shape. I agree. Like Mr James, I can see nothing which would convey to someone who was not a trade mark specialist that this bottle was intended to be an indication of origin or that it performed that function. Even were it to be recognised as of different shape to other bottles on the market, there is nothing inherent in it which proclaims it as having trade mark significance."
"That combination thus confers on the bottle in question a particular and unusual appearance which is likely to attract the attention of the relevant public and enable that public, once familiar with the shape of the packing of the goods in question, to distinguish the goods covered by the registration application from those having a different commercial origin"
That, he submitted, applied here.
"not unduly restricting the availability of colours for the other operators who offer for sale goods or services of the same type as those in respect of which registration is sought."
He submitted that such an interest was essentially limited to colour marks – to "colour depletion" and was really part of an Art.3(1)(c) objection.
"14. No doubt the sale of cheese or other dairy goods having the shapes shown in the trade marks in suit to the public is within the scope of the notional fair use to which the marks might be put."
The error is said to be the fact that he took "other dairy goods" into account. This is because the applicants had, by the time the case reached him, offered to limit the goods to just "cheese." Mr Malynicz said this was an error of principle – that for instance, the shapes in which butter is sold is irrelevant. I do not think this is so. Butter and cheese are closely linked in the public mind. They may be in different refrigerators in some supermarkets, but common experience of other kinds of shop, notably delicatessens, shows this is not necessarily so. I do not think the limitation of the specification makes any difference, and certainly not one of principle.
"12. The sign applied for is the shape of a cheese and in order to be acceptable for prima facie registration as a trade mark it must convey trade mark significance to the relevant public. It is not sufficient for it to consist of a shape which is of memorable appearance; that appearance by itself must convey trade mark significance …
13. Cheese and other dairy products (such as butter) are available in a variety of shapes, sometimes for historical reasons or for aesthetic reasons. There is nothing strikingly unusual about the shape in question which suggests that it is a source identifier".
"17. …It is generally difficult to show that the shape of goods themselves are apt to signify origin. The task of the Registrar is to consider the ability of the unused mark to indicate origin, having regard to the nature of the trade and the relevant public. She considers the mark before the proprietor has educated the public as to its function (see, on this, the very clear judgment of Laddie J in Yakult). Where ordinary household goods are involved, the Registrar's hearing officers are entitled to rely upon their own experience and perceptions".
"18. The marks in suit are neither striking nor memorable. I consider that before they could be accepted for registration the proprietor would have to have educated the public as to their significance as an indication of the origin of dairy goods."
"… it is clear from Article 3(1) of the Directive that each of the grounds for refusal listed in that provision is independent of the others and calls for a separate examination …. That is true in particular of the grounds for refusal listed in paragraphs (b), (c) and (d) of Article 3(1), although there is a clear overlap between the scope of the respective provisions (see to that effect Case C-517/99 Merz & Krell  ECR I-6959, paragraphs 35 and 36."
Quite apart from the point having been clearly so decided, if one stops and thinks about a couple of obvious examples, it must be so. A mark which serves to designate kind (and so is excluded by Art.3(1)(c)) will, for the same reason, be devoid of distinctive character: Art.3(1)(b). So also for a mark which consists exclusively of a sign which has become customary in the current language: Art. 3(1)(c).
"the authorities may take account of the fact that average consumers are not in the habit of making assumptions about the origin of products on the basis of such slogans."
"the presumed expectations of an average consumer" (para.7)`
In that case the fact that the shapes of the torches had in fact become well-known after the date of application was not enough to prove they had inherent distinctiveness within the meaning of Art.7(1)(b) of the Community Trade Mark Regulation (equivalent to Art.3(1)(b) of the Directive) (judgment para. 64).
Use and Art. 3(3)
Lord Justice Longmore:
Lord Justice Potter:
ORDER: Appeal dismissed; agreed order dealing with that and the question of costs.