The difficulty in registering a shape mark

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In Voss of Norway ASA v OHIM [2013] Case T-178-11, the EU General Court found invalid Voss' registration as a Community trade mark of the three-dimensional shape of its bottles.

Voss is a brand of premium bottled water, originating in Norway.In 2004, Voss obtained a Community trade mark registration for the three-dimensional shape of its bottles, covering alcoholic and non-alcoholic beverages (including water).     

In 2008, Nordic Spirit AB applied for a declaration of invalidity, on the basis that (among other things) the mark was devoid of distinctive character.

OHIM's Cancellation Division rejected Nordic Spirit's application (on the grounds that the shape of the mark was uncommon and diverged significantly from existing bottles in the beverage market). The Cancellation Division's decision was annulled by the Board of Appeal. The case was then referred to the EU General Court.

The General Court's interpretation of the law was that average consumers do not make assumptions about the origin of products based on their shape, or the shape of their packaging, in the absence of verbal or graphic elements. However, the Community Trade Mark Regulation does allow a trade mark to be registered in respect of the shape of goods, or of their packaging, provided that they are capable of distinguishing the goods of one undertaking from those of other undertakings. The General Court interpreted this to mean that only a mark which departs significantly from the norm or customs of the sector could operate as a badge of origin and thus would be registrable. 

The General Court ruled that the "perfect cylinder" shape of Voss' bottle, although somewhat original, could not be regarded as departing significantly from the customs of the sector (because the vast majority of bottles available on the market have a cylindrical section and average consumers will therefore expect beverage bottles to have a cylindrical shape) and neither could the non-transparent cap, or the fact that the cap's diameter is the same diameter as the bottle itself. Voss' bottle was therefore devoid of inherent distinctive character in relation to alcoholic and non-alcoholic beverages. The shape of the bottle did not enable the average consumer to distinguish Voss' products from those of other undertakings. Thus, the mark was declared invalid.

This case highlights the challenge in registering a three-dimensional mark as a Community trade mark. The result of the test set out above (i.e. that the mark must "depart significantly from the norms and customs of the sector") means that a product's shape will need to be quite different from what has gone before in the relevant field, in order for the mark to have any chance of attaining and maintaining registration as a Community Trade Mark. 

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