Pinsent Masons: How use of colour could save a bottle shape trade mark application

A decision by the Board of Appeal of the EU Intellectual Property Office (EUIPO) demonstrates how adding elements of colour might help in getting the shape of a product registered as a trade mark.

According to the Board, applying a colour scheme with different shades and nuances to a bottle can give a ‘shape’ mark sufficient distinctive character to enable it to be registered as a European Union trade mark (EUTM).

Absolut’s appeal

The Board of Appeal reached its decision in proceedings between the well-known drinks manufacturer The Absolut Company Aktiebolag (Absolut) and the EUIPO. Absolut had originally applied to register a shape mark for a bottle in class 33 “covering alcoholic beverages, namely vodka”.

But the EUIPO’s trade mark examiner initially rejected the application on the basis that the bottle shape mark was not sufficiently distinctive. According to the examiner, no aspects of the mark were “outstanding or eye-catching”, meaning that consumers would see the mark as a “mere variation of a container” and not as a trade mark denoting Absolut as the producer of the alcoholic drink product within. Absolut appealed to the EUIPO’s Board of Appeal.

Need for ‘distinctive character’

The EU Trade Mark Regulation 2017/1001 (EUTMR) provides that an EUTM may consist of the shape of a product provided that the shape can perform the essential function of distinguishing the goods of one business from those of another. Article 7(1)(b) EUTMR provides that a mark which cannot perform this essential function because it is “devoid of distinctive character” cannot be registered as an EUTM.

This judgment is especially instructive for those in the drinks industry who are launching a new product in a bottle or other packaging that has not been on the market long enough to support an argument that it has acquired distinctiveness through use.

Absolut had to persuade the Board of Appeal that its mark “departed significantly from the norms or customs of the sector”. The more closely their bottle shape resembled existing bottle shapes for alcoholic drinks, the more likely it was that their mark would be found to lack distinctive character.

Assessing the distinctiveness of the features

The Board of Appeal assessed the distinctiveness of the mark according to the perception of consumers across the EU targeted by alcoholic drinks products as a whole – not merely vodka. It found that the bottle’s rectangular body, shorter neck, conical shoulder and overall structure and proportions were not distinctive and “did not stand out” from other products in the alcoholic drinks market.

The Board also said the surface design of the bottle, which consisted of a “crystal-like structure”, was “complex and fanciful” but “not new, original, astonishing or outstanding”. In its view, consumers would not be able to commit the mark to memory and “easily and instantly” recall it as a distinctive sign.

The significance of colour as a feature

The Board took an entirely different view, however, when assessing the colour elements of the mark. It said two large rectangular shapes, occupying almost the whole back part of the bottle and coloured with different shades of copper, brown or gold, were visible from all sides and would “not go unnoticed” by consumers. The Board also noted the prominent white frame displaying different shades of the same colours on the front label of the bottle, and the copper-coloured foil wrapper around its neck.

It said that, unlike the body structure and surface decoration of the bottle, the colour elements of the mark departed significantly from the available forms and customs already on the market. The Board considered them to have a “strong impact on the perception of the whole shape of the bottle”, enabling consumers to remember and recall – in particular – the design of the back of the bottle.

Due to its size and predominance, the Board said the colour scheme would not be perceived by consumers as purely aesthetic decoration and would enable consumers to identify Absolut as the producer of the goods. The Board stressed that, while a single colour is not normally in itself distinctive, Absolut’s bottle displayed various shades or nuances of colour that covered a significant part of its shape.

In light of this, the Board concluded that the colour features of the mark would perform a trade origin function and ruled that the overall representation of the combination of colour and shape of the bottle was registrable as an EUTM.

Shape marks as part of a brand protection strategy

It is not uncommon for trade mark infringers to mimic the shape or colour of packaging. Word or logo mark protection will not help to prevent this, and while registered designs can protect the look and feel of packaging, they are time limited. By contrast, a valid trade mark can be renewed in perpetuity, and, as part of a multi-layered portfolio of protection, can help guard against infringement of a broader range of aspects of your product.

Even so, it can be difficult to register non-traditional trade marks, including those for a bottle shape, since demonstrating that the shape is significantly different from those already in use can be a high bar to overcome. But this Board of Appeal judgment is especially instructive for those in the alcoholic and non-alcoholic drinks industry who are launching a new product in a bottle or other packaging that has not been on the market long enough to support an argument that it has acquired distinctiveness through use.

The decision indicates that adding elements of colour to a shape could help an otherwise non-distinctive shape proceed to registration on the basis of inherent distinctiveness. It also suggests that, while a single colour is normally not distinctive, an application for a colour mark could also be successful where shades and nuances cover a significant – and clearly defined – part of the product applied for.

Co-written by Sarah Jeffery of Pinsent Masons.