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INTA Bulletin


January 15, 2012 Vol. 67 No. 2 Back to Bulletin Main Page

EUROPEAN UNION: New Turn for Bottles’ Distinctiveness as Trademarks


The Court of Justice of the European Union (CJEU) has overturned two decisions of the General Court and held that the specific surfaces of two wine bottles applied for registration as Community trade marks (CTMs) in Class 33 would not necessarily lack distinctiveness. (Freixenet, SA v. OHIM, Joined Cases C-344/10 and C-345/10 (CJEU Oct. 20, 2011).)

On April 1, 1996, the Spanish company Frexeinet, SA filed, for “sparkling wines” in Class 33, one trademark application for the surface of a matte golden color with a frosted effect and another trademark application for the surface of a black matte bottle. The applicant attached to its applications a description indicating that protection was claimed for specific aspects of the surfaces, but not for the shapes of the bottles.

OHIM rejected both applications in 2000, finding that they lacked distinctiveness and that acquired distinctiveness through use was not sufficiently evidenced. The matter went through the Board of Appeal, the General Court, back to the Board of Appeal and then again to the General Court.

In its opinion, the CJEU reiterated that only a trademark that departs significantly from the norm or customs of the relevant sector can be regarded as being distinctive because the average consumer is not in the habit of making assumptions about the origin of the products based on their shapes. The Court of Justice concluded that the General Court properly applied this case law, but did not properly apply it to the trademarks at issue.

For the General Court, only a label or a word equivalent could indicate the origin of the sparkling wine in question, and the color and matting of the glass of the bottle could not function as a trademark.

For the CJEU, however, such an assessment would automatically exclude from protection as a CTM the appearance of the product itself or the appearance of its packaging if they did not bear any inscription or word element. As a result, the Court of Justice annulled the decisions of the General Court without examining the other grounds and ordered OHIM to pay the costs at first Instance and in the appeal.

This was a fight of almost 16 years, but the decision in the end opens the door by softening a long-held strict approach toward three-dimensional trademarks. Especially beverage producers whose products’ appearance can commercially be attractive may now have the distinctive features of their bottle shapes and colors considered for trademark registration.


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are urged to check independently on matters of specific concern or interest.

© 2012 International Trademark Association