Refusal of Frosted Bottle Mark: Freixenet SA

The Court of Justice of the European Union (CJEU) has sent out a strong message to the General Court and to OHIM that they should go back to basics when examining the registrability of unconventional trade marks, confirming the validity of well established case law on the subject.

There were two applications in this case, which were first filed back in 1996 in relation to 'sparkling wines'. In the first application Freixenet claimed the colour 'golden matt' and described the mark as a "white polished bottle which when filled with sparkling wine takes on a golden matt appearance similar to a frosted bottle". In the second application, Freixenet claimed the colour 'black matt' and described the mark as a "frosted black matt bottle". Freixenet submitted a declaration along with each of the applications stating that the applicant did not want to obtain restrictive and exclusive protection for the shape of the packaging but for the specific appearance of its surface.

OHIM and subsequently the Board of Appeal rejected each of the applications on the basis that the marks were held to be devoid of distinctive character under Article 7(1)(b) CTMR. The General Court also rejected Freixenet’s appeal in 2008, upholding the Board of Appeal’s decisions on the basis that the colour and matt appearance of the bottle could not function as a trade mark for sparkling wine.

Freixenet then appealed to the CJEU. It argued that the General Court had infringed Article 7(1)(b) CTMR by holding that the Board of Appeal was not required to put forward specific evidence in support of its refusals to register the marks and that the marks for which protection was sought varied significantly from the norm or customs of the wine sector.

CJEU Ruling

The CJEU held that the General Court had infringed Article 7(1)(b) of the CTM Regulation. Instead of establishing whether the marks for which registration was sought varied significantly from the norm or customs of the sector, it merely stated in a general manner that since no bottle had been sold by Freixenet without a label, or an equivalent, only the word element could determine the origin of the sparkling wine in question, so that the colour and matt appearance of the glass of the bottle could not ‘function as a trade mark’ for sparkling wine.

The CJEU reiterated the findings in the Henkel, Mag Instrument and Develeycases in which it was held that in order for a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of the Regulation, it must distinguish the goods of a particular undertaking from other undertakings. Of particular relevance in this case, the Court confirmed that the criteria for assessing the distinctive character of a mark consisting of the appearance of the product itself is no different from that which is applicable to other categories of trade marks. It was acknowledged however that since average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging, in the absence of any graphic or word element, it could be more difficult to establish distinctive character in relation to a three-dimensional mark than in relation to a word or figurative mark.

The CJEU confirmed that only a mark that departed significantly from the norm or customs of the sector, thereby fulfilling its essential function of indicating origin, was not devoid of distinctive character for the purposes of Article 7(1)(b) CTMR.

Since the General Court had not applied well established case law correctly, the persistence of Freixenet paid off and the decisions of the General Court were annulled. The CJEU did not specifically apply the well established case law to the facts of the case, instead simply concluding that the OHIM Board of Appeal made the same error as the General Court by failing to assess whether the marks applied for “departed significantly from the norm in the sector”.

Conclusion

It remains difficult to overcome the test for establishing that an unconventional mark has the necessary level of distinctive character to pass the threshold and enable it to be registered. Whether or not the two marks in these joined cases “departed significantly from the norm in the sector” (or for that matter are capable of distinguishing the goods from those of other undertakings) is still arguable; however, this case proves that reasoned justification for the refusal of a trade mark must be provided based on an assessment of the well established principles and case law. If there is a failure to do so, the decision may well be open to a successful appeal.