On 21 December 2018, the Fourth Board of Appeal (the "Board") of the European Union Intellectual Property Office (the "EUIPO") allowed the registration of the Bacardi bottle as a figurative European Union trade mark.
At the outset, the examiner had refused the trade mark application on the grounds that the mark was devoid of any distinctive character. The reasoning was that consumers are not used to presuming the origin of goods based on the form of their container.
The Board annulled the decision of the examiner.
As a preliminary remark, the Board pointed out that the criteria laid down in Article 7(1)(b) of Regulation 2017/1001 of 14 June 2017 on the European Union Trade Mark for assessing the distinctive character of a trade mark applied indistinctly to all categories of trade marks, including figurative trade marks.
Hence, the Board proceeded to assess whether Bacardi bottles satisfied these criteria.
First, it recalled that the shape of a good is likely to be devoid of any distinctive character if it resembles the shape most likely to be taken by that product. It is therefore necessary for the shape to depart significantly from the norm or customs of the sector.
Second, it noted that the trade mark applied for did not confine itself to the shape and contours of the bottle, but encompassed various additional graphic elements such as a faint green colour, a bright-red seal and a white label with distinguishing ornaments. According to the Board, the combination of these elements, albeit in themselves possibly non-distinctive elements, conferred on the overall appearance of the mark at least a low degree of distinctiveness.
The Board added that the assessment of distinctive character did not amount to an examination of novelty. Accordingly, it is not sufficient to show that the mark, or one of its elements, is also used by others to refuse registration on the basis of a lack of distinctiveness, as long as this does not reflect a norm or custom on the sector.
Third, the Board found that the combination of the elements contained in the sign were not too complex to be memorised by customers.
In conclusion, the Board decided that the relevant consumers would be able to identify the origin of the good solely on the basis of the particular combination of the different elements of which the mark consisted. It therefore allowed the registration of the bottle as a trade mark.
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