Evidence of distinctiveness for 3-Dimensional Trade Marks
G. M. Piccoli Srl, an Italian bakery, applied to register a 3-dimensional mark (shell shaped pastry) for a list of goods that included pastries.
While OHIM confirmed that 3-dimensional trade marks can be registered as long as they meet the same criteria as for all other kinds of trade marks, i.e. they must be capable of distinguishing the goods or services of one undertaking from those of others, they decided that the average consumer would not recognise this sign as a trade mark for the goods covered by the application because it was not distinctive. The Applicant attempted to rely on the saving provision that the sign had acquired distinctiveness through use, and filed supporting evidence of use in Italy.
However, OHIM decided that the extent of use was insufficient because the objection applied throughout the Community. The application was therefore refused and, having appealed unsuccessfully to the OHIM Board of Appeal, the Applicant appealed to the Court of First Instance of the European Communities (CFI).
The CFI decided that even though the same registrability criteria applied to 3-dimensional shape as for more traditional word marks, the perception of the public is not necessarily the same - the sign could simply be taken by the average consumer as the shape of the goods. This was especially the case here as the applied-for mark did not diverge significantly from the shape of the products that were common in the relevant trade sector.
Further, the CFI confirmed that a CTM is a single, Community-wide right so the criteria for registration must be met in all Member States. If there is one country in which the objection still applies then the entire CTM application must be refused. As there was no indication to the contrary, the ground for refusal was deemed to apply throughout the Community. The evidence of acquired distinctiveness must therefore relate to each country of the Community i.e. all 27 Member States. The evidence relating to Italy was therefore not enough to save the CTM application from refusal. This contrasts with language bases non-distinctiveness objections where evidence of use only in a substantial part of the Community for which the objection arises can prove sufficient.
This decision illustrates the potential difficulties and cost involved in obtaining registration for a 3-dimensional trade mark. It might also be of some comfort for a defendant in infringement proceedings who would need only to show that the registrability criteria were not met in a single Member State in order to render the entire CTM invalid. Whilst the right to convert a failed CTM into national applications provides some relief it might not be enough to attract a CTM filing over national applications for 3-dimensional marks in key territories, notwithstanding the recent reduction in OHIM fees.