Is a skull shaped bottle for vodka devoid of distinctive character and does it substantially enhance the attractiveness of the goods and strongly influence consumer preferences? A recent decision of the Cancellation Division considered the absolute grounds for resual of a 3D shape mark, which offered this Kat the opportunity to post a cat in a Ghostbusters costume!

The Party Products

Crystal Head Vodka is a brand of vodka made by Globefill in Canada, created by actor Dan Aykroyd [of Ghostbusters fame] and American painter John Alexander.

Globefill registered its EU 3D shape mark [shown below] in August 2016, in Classes 32 [Beers (alcoholic and non-alcoholic); fruit juices and fruit drinks; bottled water; non-alcoholic carbonated beverages; preparations for making all of the foregoing] and 32 [Vodka; brandy spirits; prepared alcohol cocktails; wines; gin; rum; sake; tequila; vermouth; whisky; aperitifs with a distilled alcoholic liquor base; anisette; schnapps; ouzo; sherry; kirsch]. The mark consists of a 3D representation of a skull in clear glass with a short tubular opening on the top, which is rounded and slightly wider round the edge, with a flat base. Globefill also hold copyright, a registered design right and patent for the same skull shaped bottle design.

EUTM No 15 736

The Application 

The application was for a declaration of invalidity against the EU trade mark (EUTM) on the absolute grounds for refusal [Art 59(1)(a) Regulation (EU) 2017/1001]. The application claimed that the mark was devoid of distinctive character [Art 7(1)(b)] and that the shape gives substantial value to the goods [Art 7(1)(e)(iii)].

Distinctive character - Article 7(1)(b)

Only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b). 

The applicant argued that the EUTM consists merely of the form of a bottle and average consumers are not used to seeing the shape of bottles as being distinctive, and so are not capable of fulfilling the essential function of guaranteeing trade mark origin. 

The proprietor filed evidence to show that there are currently just over 1,000 3D EUTMs registered for goods in Class 33. Almost all of them are bottles. Many of these bottles contain a prominent word which distinguishes them, while many of them are variations on a standard bottle theme, for example, square-sided bottles, or fluted or ribbed bottles. A few of them represent a different shape such as the Big Ben Tower or a violin, but there is just one skull shaped bottle which is the proprietor’s crystal head bottle, serving to demonstrate that the EUTM is different from anything else on the market.

Absinthe brings the idea of a headache to mind....

The Cancellation Division found that the EUTM differs considerably from the shape of a typical bottle. So much so that without the opening on the top, it would be impossible to be certain that the skull was a container for liquids, as the shape of a skull does not lend itself to the act of pouring out a drink. The examples of skull-shaped containers provided by the applicant show that, aside from the fact that some are used for different products and some of them are used as decanters rather than bottles for the sale of beverages, none really resembled the EUTM. Several of the bottles retained the traditional shape of a bottle and merely incorporate 3D features on one side to bring a skull to mind. Therefore, the Cancellation Division found that the EUTM departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin and consequently not devoid of distinctive character.

Does the shape provide substantive value to the goods? Article 7(1)(e)(iii)

Under Article 7(1)(e)(iii) EUTMR, signs that consist exclusively of the shape or another characteristic that gives substantial value to the goods cannot be registered, or if registered they are liable to be declared invalid. 

The applicant argued that this provision is designed to prevent the monopolisation of the external features of goods which do not necessarily perform a technical or practical function, but which substantially enhance the attractiveness of goods and strongly influence consumer preferences. The applicant argued that if the EUTM remains on the register, the protection conferred by the mark could be used to stop anyone else using the idea of a skull shaped bottle, allowing the proprietor to gain an unfair market advantage. The applicant claimed that the proprietor wished to prevent the entire drinks market from using skull shaped bottles which is a matter for design law, not trade mark law with its potentially perpetual term of protection, and precisely the ‘evil’ at which the prohibition on shape marks under Article 7(1)(e)(iii) is aimed. The applicant claimed that although the skull design is not that dissimilar from other shapes in use, it is different enough for the average consumer to notice the aesthetics and place value on that, and therefore the shape and design of the EUTM gave substantial value to the goods in question.

"Alas, poor Yorick! I knew him, Horatio, a fellow of infinite jest, of most excellent fancy." Image: Athalia Perez Aguilar

The EUTM proprietor argued that in practice, minimal labelling is used on its crystal head products. Therefore, the relevant public is obliged to rely on the shape of the mark to identify the product, rather than a distinguishing word placed on a label. 

In response, the applicant pointed out that the proprietor always sells its goods with the brand name affixed to the bottle and did not accept the proprietor’s argument that its crystal head bottle may be displayed on a shelf for sale without showing the brand name. In its opinion, if the proprietor wished to rely on this, it should have provided evidence that consumers make purchases without ever seeing the brand name. The applicant argued that this was merely a clever marketing ploy to make the consumer pick the product up and check the brand name.

The proprietor explained that its product retails in the UK for less than its recommended retail price and therefore, on these facts alone, the EUTM gives no substantial value to the goods. In addition,  the proprietor noted that to fall foul of this provision, the shape must ‘substantially enhance the attractiveness of goods and strongly influence consumer preferences’. However, the goods are sold around the average price for the luxury vodka sector, and the proprioator argued that whilst the EUTM might enhance the attractiveness of the product to a small degree, it does not strongly sway the preference of the consumer who is primarily intent upon purchasing a luxury vodka product, and therefore it is the goods themselves that determine the market success of the goods, not their packaging.

The decision

The Cancellation Division stated that the concept of ‘value’ should be interpreted not only in economic terms, but also that the goods would be purchased primarily because of their particular shape or another particular characteristic. Likewise, that the shape, or other characteristic, may be pleasing or attractive is not sufficient to exclude it from registration. If that were the case, it would be virtually impossible to imagine any trade mark of a shape, or another characteristic, given that in modern business there is no product of industrial utility that has not been the subject of study, research and industrial design before its eventual launch on the market. 

Following the case of Loudspeaker (T-508/08) EU:T:2011:575, the Cancellation Division determind that 5 questions need to be answered in the affirmative when deciding whether an EUTM falls foul of Article 7(1)(e)(iii): 
1) Is the design of the EUTM a very important element in the consumers’ choice?
2) Is the design of the EUTM very specific? 
3) Is the design of the EUTM an essential element of the branding policy of the proprietor and does this increase the appeal (the value) of the product?
4) Are the aesthetic qualities of the EUTM emphasised first by the proprietor when promoting its product?
5) As the EUTM perceived as a pure and timeless sculpture?

The Cancellation Division found that the applicant failed to demonstrate that the proprietor emphasised the aesthetic qualities of the EUTM first when promoting its products. There was no evidence of a systematic promotional campaign that placed the primary emphasis on the design of the bottle, which could have been demonstrated with adverts or screenshots of the proprietor’s website. Instead, most of the extracts seemed to be commentaries on events or interviews which was not deemed evidence of a regular marketing campaign focusing on the aesthetics of the bottle.

The Cancellation Division took the view that the applicant merely demonstrated that there are people who like the appearance of the crystal head bottle, but not that the EUTM proprietor promotes the appearance and aesthetics of its bottle to the extent that it has become an essential part of its branding, increasing the appeal, and therefore the value, of the product contained within the bottle. Furthermore, the proprietor demonstrated that the appearance of the bottle did not strongly sway the preference of the consumer, who is primarily intent upon purchasing a luxury vodka product, by way of several compelling items of evidence, such as winning blind taste test awards. Therefore, concluding that the applicant failed to prove that the design of the EUTM was an essential element of the branding policy of the proprietor which increased the value of the product and the application was rejected.