Hopes for Trade Mark Protection Washed Out

Introduction
The Court of First Instance has again highlighted the difficulty faced by companies seeking trade mark protection for three dimensional shapes. Proctor and Gamble are the latest to have experienced this as their European Community trade mark applications for washing tablet shapes were rejected on the basis that the shapes lacked distinctiveness.

Background
Procter & Gamble filed a number of trade mark applications at the Community Trade Mark Office (OHIM) for three-dimensional cube shaped washing tablets with various coloured petalled floral designs, an example of which is shown below.

However OHIM refused the applications citing Article 7(1)(b), which states that “trade marks which are devoid of any distinctive character” shall not be registered. Procter & Gamble filed appeals but these were also rejected by the Board of Appeal at OHIM and so a further appeal was filed to the CFI.

CFI Findings: The difficulty for three dimensional shapes

It was restated by the CFI that to be registrable, a trade mark must be distinctive in respect of the particular goods/services as well as in the perception of the average consumer. It was also noted that whilst there is no different test for three-dimensional shapes, consumers are less likely to make assumptions as to the origin of goods based on their shape. Consequently three-dimensional shapes must depart significantly from the norm to be registrable as trade marks.

Average consumers have a low level of attention
The CFI upheld the Board of Appeal's view that the goods in question were everyday consumer goods. Therefore the average consumer would not pay a particularly high level of attention, even though the particular goods may cost more than others. If the average consumer would not pay a particularly high level of attention, then the mark in question must have significant distinctive properties (i.e. depart significantly from the norm) to gain registered trade mark protection.

Do the consumers of Procter & Gamble's washing tablets pay a high level of attention?
Procter & Gamble endeavoured to demonstrate that their consumers paid a high level of attention to their washing tablet shapes and that therefore consumer habits differed from normal consumer behaviour.

They made a number of arguments:

• Producers actively seek to distinguish their products from others on the market, and this is illustrated by the variety of washing tablets available and by the number of three-dimensional shape trade mark applications filed for washing tablets.

• Even if the tablets are sold in packaging, they can still be depicted on the packaging and therefore act as a trade mark.

• The particular tablets that are the subject of the trade mark applications are amongst the most expensive available and this ensures that consumers pay a high level of attention.

The CFI rejected these arguments since it was not felt that consumers would be more observant of Procter & Gamble's washing tablets than they would of any others.

Can the marks be perceived as indications of origin?
If the marks are seen as indications of origin by consumers, then they would function as trade marks and be capable of registration. In respect of this the CFI considered a number of issues.

• Shape of tablet: not such that it could be easily distinguished from others and so the tablet was considered obvious.

• Two distinct colours in the tablet: the public is used to seeing this and it is commonly an indication of the various active ingredients.

• Various designs on each tablet (e.g. hexagonal floral petalled design): Board of Appeal was entitled to compare these with simple shapes. Since the shapes on the tablet would just be seen as another indication of the presence of an active ingredient, they have no effect on the perception of Procter & Gamble's mark. The designs on the face of each tablet do not change the appearance of the tablet in any significant way.

• Overall there is not enough distinction from the norm, despite the shape of the tablet, the colours and the design.

Assessing distinctiveness
The CFI concluded that distinctiveness cannot be assessed by looking at how many alternative shapes are on the market; or by the absence of shapes identical to those for which registration is sought. Consequently it is not necessary for the Board of Appeal to provide examples to substantiate grounds for objection on the basis of lack of distinctiveness.

Conclusion
Although a shape mark might be unique, any assessment as to registrability must take place in isolation. Bearing in mind the long-accepted precedent that consumers are less likely to make assumptions as to origin of goods based on shape, gaining trade mark protection for such marks continues to be difficult. To overcome this hurdle, it is important to ensure that the mark has a striking appearance such that consumers regard it as an indication of trade origin. Without this, the likelihood exists that OHIM will object on the basis that the mark lacks distinctiveness.

Edward Carstairs 22 Jan 2007

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