Several courts in the European Union have recently been preoccupied with appeals regarding three-dimensional (3D) and colour trademarks. Current EU trademark legislation and the national laws of all member states where there has been harmonisation permit the registration of such marks; but what are the current problems and is there any link between the cases? Are applicants seeking to push the boundaries of protection?
Article 2 of the EU Trademark Directive (2008/95/EC) (and its predecessor) permit the registration of "any sign capable of being represented graphically......including..... the shape of goods...... provided it is capable of distinguishing the goods of one undertaking from those of another". Such marks are also subject to three provisos in Article 3 (1)(e), which exclude from registration shapes that result from the nature of the goods themselves, that are necessary to obtain a technical result or that give substantial value to the goods. Such provisos also exist in the national laws of all harmonised member states.
Two decisions handed down in March have attracted attention in this regard. Italian brand Bottega Veneta had applied in February 2008 to register as trademarks at the Office for Harmonisation in the Internal Market (OHIM) the shapes of two of its 'luxury' handbag styles (Community Trademark Applications 6632608 and 6632566). These had been accompanied, as required, by graphical representations of the goods in the form of simple pictures. Even though applicants are given the opportunity on filing to include further written description to identify particular or salient features of their marks, no additional written description of any of the features of the bags was provided.
The OHIM examiner rejected both applications on the basis that there was nothing distinctive or particularly unusual about the shape of each bag as shown, and that the shapes represented were effectively common or within what was normal within the trade.
In response, Bottega's representatives submitted enhanced representations of each bag and argued that not only the shape of the bags, but also in particular the nature of their woven surface, was unusual. They also submitted some evidence of use that had been made of the mark, with particular attention being paid to the nature of the style and weaving. Little evidence testifying to the distinctiveness of the shapes of the bags as shown in the original applications was provided. However, as the detail of the weaving was not clearly evident from the representations as originally filed, and as no reference to it had been made in any additional written description on filing, all of these arguments were rejected, as were the applications. Bottega appealed to the OHIM Appeal Boards, which rejected the appeals.
Bottega appealed both cases to the General Court. It argued that its high-end customers would pay great attention to the style of the bags and the nature of the weaving when making purchases. However, in decisions last March the General Court rejected both appeals. It ruled that the shapes as originally represented did not depart from the norms or customs of the commercial sector concerned, and that the examiner had been correct in disregarding any emphasis on the weaving, as this could not readily be discerned from the original filing documents.
It is always tempting for an applicant or its representative to seek the broadest possible protection when applying, but as when drafting claims in patent applications, a balance must be struck between seeking breadth on the one hand so as to deter competitors, and providing sufficient precision or clarity on the other so that the scope of the right is clear.
This was a problem in a recent UK High Court decision relating to Mattel's 3-D 'Scrabble tile' UK trademark registration. The court held that the registration was invalid because it covered an infinite number of permutations of different sizes, positions and combinations of a letter and a number on a tile. It did not specify the size or colour. In the court's view, it was an attempt to claim a perpetual monopoly on all conceivable ivory-coloured tile shapes which bore any letter and number combination on the top surface, and was a mere property of the goods and not a sign.
Similar considerations have applied to marks involving colour. In the recent Louboutin red-soled shoe cases in France and the United States, the protection sought was considered too broad or imprecise - one reason being that the exact shade was not specified. The US case between Louboutin and Yves St Laurent has now settled, but the scope of the mark has in effect been limited so that the colour of the sole must contrast with that of the rest of the shoe. In France, following attack by Zara, the original mark has been lost; but in Benelux, where the red shade was specified, registration was achieved and the mark has recently been upheld and a preliminary injunction against Van Haren Schoenen granted.
Several ongoing battles between Cadbury and Nestlé in the United Kingdom involve either colour or shape marks. On the colour front, Cadbury was recently successful in the High Court in achieving registration for its particular shade of purple in relation to a narrow range of chocolate products, despite opposition from Nestlé. A significant point still at issue (the case has been appealed to the Court of Appeal, which should decide shortly) is the clarity of the description of the mark, which says that the colour is to be "applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods". It was argued in the High Court that this was insufficiently clear, but the judge there felt it acceptable in light of the earlier European Court of Justice *Libertel* decision.
On a different ground, Cadbury recently successfully opposed Nestlé's application in the United Kingdom to register the 3D shape of a plain four-fingered chocolate wafer bar. Despite the significant reputation of Nestlé's KitKat product, Cadbury's evidence that the shape of the bar itself was largely dictated by technical considerations involved during the manufacturing process won the day, as this falls within one of the specific exclusions. The experienced hearing officer recognised that his decision was at odds with an earlier OHIM appeal ruling about the same mark, and commented that: "It is not clear that the (OHIM) Board of Appeal had the expert evidence that has been filed in these proceedings [and] did not have the benefit of hearing cross examination of experts on their evidence about the functionality and manufacturing considerations related to various aspects of the shape." He did also find that the shape *per se* was within the norms and customs of the sector, and was a mere variant on common shapes for chocolate bars and biscuits. One suspects that this decision may also be appealed.
None of these cases is especially remarkable in trying to push the boundaries of trademark protection. As happened a few years ago with the LEGO brick shapes, traders can and should justifiably seek to protect what they legitimately feel are aspects of their trading styles that the public recognise and trust. The rules are there, but what many cases in this area illustrate are clarity problems inherent in describing what is sought to be protected. Assuming that this hurdle is overcome, the issue of whether the shape is *per se* distinctive must also be determined. Last year's case involving Lindt's "chocolate Easter bunny" confirmed again that only a shape mark which departs significantly from the norm or customs of the industry, and thereby fulfils the essential function of indicating origin, is not devoid of distinctive character. If there is doubt, persuasive evidence will be needed that the mark has become distinctive of the applicant through use in a significant part of the jurisdiction concerned. The General Court's recent decision in a case involving Think Schuhwerk's red-tipped shoelaces - which held that the applicant had provided no evidence to suggest that the colour of parts of the laces of a shoe was perceived by the relevant public as an indication of commercial origin - illustrates the point.
In the case of the Cadbury mark and, ultimately, the Louboutin mark, their distinctiveness for a narrow range of goods by virtue of extensive promotion and use was conceded. In the case of the Nestlé KitKat bar, the statutory exclusion overrode any consideration of distinctiveness. In the Bottega cases, the extent of use may well have been insufficient to show distinctiveness in any event, but the issue was clouded by the lack of any clear representation of the allegedly distinctive weaving.
These cases have not yet sounded the death knell for 3D or colour marks, but suggest they will be with us a while yet. The Bottega decisions are perfectly rational, in that the applications failed to identify in sufficient detail exactly what protection was being sought. At least one other application filed by Bottega at around the same time for another bag product and which did include a written description (eg, Community Trademark Application 6632624) was allowed to pass to registration, so the door remains open.
First published in World Trademark Review, October 2013
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