–Dave Holt, Solicitor & Alex Watt, Partner, Browne Jacobson LLP
In the European Union, Coca-Cola has recently followed in the stumbling footsteps of fellow global super-brand Nestlé, falling at the final hurdle in its attempt to register the three-dimensional shape of its iconic ‘Coke bottle’ in classes 6, 21 and 32. You can read the judgment in full here. The shape mark in question (the “Mark”) was depicted as below:
There is much to take from this decision and in reviewing it you will notice that the Mark applied for has the recessed banding we expect from the coke bottle, but does not have any of the particular features or detailing, particularly missing the contoured fluting, that we might usually expect to see on a ‘Coke’ bottle. The claim for that slightly more generic-looking bottle shape, rather than the better-known and distinctive bottle shape, may ultimately have proved to be Coke’s undoing.
Interestingly Coca-Cola also sought to register this mark in Class 6, being “Common metals and their alloys; metal building materials; ironmongery, small items of metal hardware; goods of common metal not included in other classes; metallic bottles”. Perhaps we have missed out on the opportunity for a new, innovative metal coke bottle or coke bottle statue…
Coca-Cola appealed the decision of 27 March 2014 made by OHIM’s Second Board of Appeal (“contested decision”), which rejected registration of the Mark, and held:
- The average consumer of the mass drinks market was not particularly attentive and was likely to have ‘imperfect recollection of trade-marked products’;
- The Mark as submitted was devoid of distinctive character (article 7(1)(b) of Regulation No 207/2009 (the “Regulation”)) as regards the goods concerned, particularly as the features were common to the shape of the contested goods in classes 6 and 21 and packaging of the goods in class 32;
- The Mark in question had not acquired distinctive character through use, and the survey submitted by Coca-Cola was held to contain leading questions, mathematical errors, and was conducted by a former director of Coca-Cola. On this basis, the evidence was held to be unreliable and not of probative value;
- The Mark was, in fact, rarely depicted in the evidence submitted. Instead Coca-Cola submitted evidence of their contoured bottle with fluting, and as such, were of little use in demonstrating acquired ‘distinctive character’ (Article 7(3) of the Regulation).
Coca-Cola sought to have the contested decision annulled (and sought costs, naturally) on the following grounds:
First Plea (inherent distinctiveness)
- Although bottles are functional, many bottles are designed to attract consumer attention in a crowded market;
- The Second Board of Appeal should have considered the combination of the specific features, and the effect of the Mark as a whole; and
- The Second Board of Appeal should not have considered that the use of a distinctive word mark in combination with the Mark means a product is devoid of distinctive character alone (Freixenet v OHIM EU:C:2011:680 para. 42 cited).
Interestingly, the decision in Nestlé v Cadbury supports the argument that a shape must be distinctive ‘in and of itself’, rather than simply being associated with other trademarks. As Coca-Cola rightly suggested, this does make the threshold very high for registration of a trade mark, which the Mark arguably does not clamber over.
The court held that the criteria for assessing a three-dimensional shape mark are no different to any other trade mark. However, the court noted that the perception of a consumer of a three-dimensional mark is not necessarily the same as a word or figurative mark which is independent of the goods it designates.
The court decided in relation to the first plea that both the constituent elements of the Mark, and the Mark as a whole did not depart significantly from the norms of the sector, and no elements rendered the mark distinctive enough to allow consumers to infer its commercial origin. The first plea was therefore dismissed.
Second Plea (acquired distinctiveness)
Coca-Cola went on to plead that the large volume of evidence provided to OHIM and to the court demonstrated acquired distinctive character, particularly due to the broad use of the mark and the survey evidence demonstrating association of the Mark with Coca-Cola. Coca-Cola also suggested that the use of the bottle with contoured fluting did give acquired distinctive character to the Mark, on the basis that the Mark is a component thereof.
The court noted that the Mark needed to have “become distinctive through use before the application for registration was filed” (para.67, emphasis added), and that distinctive character cannot be proven simply by furnishing sales volumes figures and advertising material. The court reiterated that for a mark to have acquired distinctiveness under Article 7(3) of the Regulation, the relevant consumers “or at least a significant proportion thereof, identifies goods as originating from a particular undertaking because of the mark”.
Interestingly, the court held that the sign must have distinctive character throughout the European Union, and that a lack of distinctiveness in a single member state may be enough to refuse registration. Coca-Cola only surveyed in 10 of the 27 Member States, which the court held to be less than a ‘significant proportion’ of the relevant public for the Mark. The other evidence submitted by Coca-Cola was also found to be insignificant on various grounds.
The court, reiterating the need for the Mark to be a clear indicator of commercial origin, confirmed that Coca-Cola had not demonstrated the Mark had acquired distinctiveness, and thus the second plea was unfounded.
In much the same way as was found in the recent Nestlé v Cadbury decision, the general court has set out a clear statement to applicants that their marks must be clearly indicative of commercial origin, and that mere recognition, whether alone or in combination with other marks is unlikely to be sufficient for acquired distinctiveness. Therefore the position remains that three-dimensional shape marks are difficult to attain. However, one might ask: if the Coke bottle is not a sufficiently distinctive shape – what three-dimensional shape mark will be distinctive?
However, in our view, we consider that it might well have been possible to register the three-dimensional Coke bottle shape had Coke not been so ambitious in their application and applied only for the more distinctive fluted bottle-shape that was referred to within much of their evidence – rather than the more generic shape in their application. It is also notable that survey evidence has once again been found unsatisfactory, which should serve as a reminder to applicants for such marks that there is a high bar, and that they will need to think very carefully about their approach to survey evidence, ensuring that it is comprehensive (particularly in respect of community marks) and carried out by a truly independent party.