European Union: EU General Court Reaffirms Refusal Of Trade Mark Registration Of Shape Of New Coca-Cola Bottle

On 24 February 2016, the EU General Court ("GC") gave judgment on the validity of the trade mark registration by The Coca-Cola Company ("Coca-Cola") for the shape of Coca-Cola's contour bottle. The Board of Appeal Office for Harmonization in the Internal Market ("OHIM") had refused registration for the sign on 27 March 2014 and the GC upheld the decision of the OHIM arguing it was devoid of distinctive character.

By an application filed on 29 December 2011, Coca-Cola had sought to register the shape of its contour bottle without fluting as a Community Trade Mark, claiming that the relevant public would associate this bottle with its iconic contour bottle with fluting. In the eyes of that public, Coca-Cola argued, the mark applied for constitutes an evolution of its well-known fluted bottle.

After both the initial examiner and the Second Board of Appeal of the OHIM had dismissed this application for registration, Coca-Cola turned to the GC. Coca-Cola asserted that the OHIM decision had wrongfully applied Article 7(1)(b) and Article 7(3) of Regulation No 207/2009 on the Community trade mark (the "Trade Mark Regulation").

Article 7(1)(b) of the Trade Mark Regulation lays down an absolute ground for refusal of trade mark registration when a trade mark is in fact devoid of any distinctive characteristics. The GC stated that this must be assessed, firstly, by reference to the goods in respect of which registration has been applied for and, secondly, by reference to the perception of these goods by the relevant public.

Moreover, the GC asserted that, specifically with regard to liquid goods, which by definition are packaged for sale, an average consumer will simply perceive the packaging as a form of container. It follows that only a mark which differentiates itself significantly from the norms or customs of the sector, and by those means fulfils its essential function of indicating origin, is not devoid of any distinctive character. Hence, turning to the shape of the contour bottle without fluting, the GC sided with the OHIM by noting that neither the characteristics of the bottle as a whole, nor other concrete factors such as the way various features are combined would result in enabling the average consumer to distinguish this specific bottle from those of other undertakings. Coca-Cola's argument that the relevant sector is highly competitive and therefore firms try to make their products stand out by means of their packaging, did not in itself suffice to alter this outcome. Hence, the GC dismissed Coca-Cola's first plea as unfounded.

In addition, Coca-Cola claimed that OHIM had misapplied Article 7(3) of the Trade Mark Regulation since it had held that the mark applied for had not acquired distinctive character through use. In this regard, the GC acknowledged that a three-dimensional mark may, in certain circumstances, acquire a distinctive character through use even if it is used in conjunction with a word mark or figurative mark. On this point, it would suffice that the relevant class of persons perceive the goods, designated exclusively by the mark applied for, as originating from a given firm.

Once more, the GC sided with the OHIM and held that Coca-Cola failed to submit sufficient and convincing evidence in order to substantiate its claim. The surveys that gauged the recognition rate and were conducted on behalf of Coca-Cola in 10 EU Member States were not capable of proving that the mark applied for had acquired a distinctive character throughout the European Union. The GC considered that these results could not be extrapolated to the other 17 EU Member States (the European Union had 27 Member States at the time of application for trademark registration). Moreover, figures concerning investments made in advertising and communication did not provide adequate evidence of distinctive character acquired through use as these did not specifically relate to the mark applied for. The GC therefore held that it was not possible to draw any conclusions from those figures with regard to the relevant public's perception of the mark.

As a result, the GC dismissed the action in its entirety and refused registration for the trade mark. However, since the judgment of the GC is open for appeal to the Court of Justice of the European Union, this does not have to be the end of the road for Coca-Cola.

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