10. November 2022
We have successfully overturned a decision of the EU Second Board of Appeal to revoke a 3D EU trade mark in the shape of a baby's bottle for confectionery goods.
Our client The Bazooka Companies (previously The Topps Company) had registered the 3D shape of a baby's bottle as an EU trade mark for confectionery goods. The shape was used in the EU in relation to Bazooka's well-known candy product Big Baby Pop! which is in the shape of a baby's bottle, with a removable teat-shaped lid that covers the teat.
The Board of Appeal had held that the 3D shape mark had not been put to genuine use in the EU on the basis that, amongst other things, the mark had not been used as registered. It also held that the shape of a baby's bottle was non-distinctive for confectionery goods and that the additional word/figurative elements on the packaging meant that the use of the trade mark was different to how it had been registered (the registration being a simple black and white depiction of the well-known shape of a baby’s bottle without any word or figurative element).
Our trade marks team successfully appealed the decision to the EU General Court. The General Court held that the 3D mark had an average distinctive character in relation to confectionery goods. It also found that the word/figurative elements that covered the mark as used did not alter that distinctive character, meaning that the mark had been used as registered even with the additional word/figurative elements on the packaging.
The General Court agreed with our team's argument that "it is inconceivable from a commercial and regulatory point of view to sell the goods at issue solely in the form of which the contested mark consists and without any label on its surface". The EUIPO was ordered to bear its own costs and to pay those of Bazooka.
Commenting on the decision partner Roland Mallinson said: "We're very pleased to have secured this appeal for our client, which has been years in the making. It has major implications for the owners of 3D shape trade marks, whose registrations could have been exposed to large-scale cancellations had the decision of the EUIPO been upheld".
Dirk Wieddekind, who argued the case at the General Court, said: “The decision strengthens the rights of owners of three-dimensional marks and helps to protect brand owners against unwarranted cancellation claims. 3D marks are commonly used together with additional figurative and word elements. Had the decision of the EUIPO been upheld, it could have become very challenging for owners of 3D marks to establish genuine use of their marks and to preserve their rights,” he said.
The Taylor Wessing team was led by partner Roland Mallinson and senior associate Simon Jupp in the IP & Media team with support from partner Dirk Wieddekind and senior associate Daniel Wiemann in the Hamburg office.
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