Our team have successfully overturned a decision of the Board of Appeal to revoke a 3D trade mark in the shape of a baby's bottle for confectionery goods.  The case has major implications for the owners of 3D shape trade marks.  Had the decision of the EUIPO been upheld, it could have been very challenging for brand owners to establish genuine use of their 3D shape marks.

What has happened? 

• The contested mark is registered as a black and white depiction of the shape of a baby's bottle.  The mark as used was the same shape but included additional word/figurative elements.
• EU law provides that an EU trade mark registration can be revoked on application to the EUIPO if the trade mark has not been put to genuine use for the goods/services in question in the EU within a continuous period of five years.  Use of the EU trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it is registered is to be regarded as genuine use.
• The Board of Appeal found that the use as demonstrated was neither use of the contested mark as registered, nor use in a form differing in elements which did not alter its distinctive character.  It held that the contested mark as registered had merged with the additional figurative and word elements to form another sign, meaning the mark could not be perceived as an independent mark.
• The General court has confirmed that the combination of a 3D shape mark with figurative/word elements does not alter the distinctive character of that mark and that those elements do not dominate the overall impression.  The figurative/word elements that cover the contested mark as used may facilitate the determination of the commercial origin of the goods covered, but they do not alter the distinctive character of the contested mark and their addition amounted to use of that mark in an acceptable variant.
• Products are rarely, if ever, used just as the shape along with no markings on the surface.  Had the decision of the EUIPO been upheld, it could have been very challenging for brand owners to establish genuine use of their 3D shape marks.

Want to know more? 

This case concerned an application for revocation filed by Mr Trebor Robert Bilkiewicz in December 2018 against the EU trade mark registration for the 3D shape shown above owned by The Bazooka Companies (previously The Topps Companies).  The goods covered by the registration were "Confectionery; sugar confectionery; candy; sweets; sherbet" in class 30.  In May 2020, the Cancellation Division granted the application for revocation in respect of all the goods covered by the contested mark.

In March 2021, the Board of Appeal upheld the Cancellation Division's decision.  It found that the distinctive character of the contested mark, which consisted of a commonly shaped baby's bottle, was weak and would therefore be easily altered.  It found that the forms submitted in evidence differed from the form protected by the contested mark by significant variations in nature, length and position.  It concluded that the additional word and figurative elements were not negligible but rather distinctive. It therefore held that the use as demonstrated was neither use of the contested mark as registered, nor use in a form differing in elements which did not alter its distinctive character.  The contested mark as registered had merged with the additional figurative/word elements to form another sign and could not be perceived as an independent mark.

The General Court considered two main issues:

The distinctive character of the contested mark

The Board of Appeal attributed only a weakly distinctive character to the contested mark, on the basis that it is an ordinary container and that a baby's bottle shape is not unusual for the protected goods in class 30.

The General Court agreed with the arguments put forward by Taylor Wessing on behalf of the proprietor that the contested mark was registered in respect of confectionery goods which are entirely unrelated to goods used for feeding milk to babies.  It could not therefore be concluded that the contested mark had a weak distinctive character for the sole reason that it consisted of a commonly shaped baby's bottle.

The General Court also noted that the registration of the contested mark as an EU trade mark was allowed and the mark must be presumed not to be devoid of any distinctive character for the purposes of Article 7(1)(b) EUTMR.  At the time of registration, the EUIPO considered that the contested mark departed significantly from the norms or customs of the sector concerned consisting of confectionery goods.

It was also apparent from the documents submitted in the course of the proceedings before the EUIPO that the contested mark was regularly described as candy in the shape of a baby's bottle.  Those documents also showed that it was relatively rare in the confectionery sector to emphasise the shape of a product.  The General Court also considered that, in everyday life, the baby's bottle is not perceived as having a purpose other than that of containing milk or a baby's beverage.

For all these reasons, the General Court found that the contested mark had an average (not weak) inherent distinctive character.

Whether the combination of a 3D mark with figurative/word elements alter the distinctive character of that mark and dominate the overall impression

Under Article 58(1) EUTMR, the rights of the proprietor of an EU trade mark are to be revoked on application to EUIPO if the trade mark has not been put to genuine use in the European Union within a continuous period of five years, and there are no proper reasons for non-use.  Point (a) of that Article confirms that use of the EU trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered is also to be regarded as genuine use.

The Board of Appeal had found that the use of the mark as demonstrated was neither use of the contested mark as registered, nor use in a form differing in elements which did not alter its distinctive character.  It held that the contested mark as registered had merged with the additional figurative and word elements to form another sign, meaning the mark could not be perceived as an independent mark.

The General Court found the following:

• The condition of genuine use could be satisfied where a trade mark is used in conjunction with another mark, provided that the mark continued to be perceived as indicative of the origin of the product at issue.
• The addition of the mark BIG BABY POP! and the other figurative/word elements to the surface of the contested mark as used did not alter the form of that mark since the consumer could still distinguish the form of the 3D mark, which remained identical in the eyes of that consumer.
• The product at issue was described in the evidence before the EUIPO as candy in the shape of a baby’s bottle.
• The fact that the mark BIG BABY POP! Might have facilitated the determination of the commercial origin of the candy in question was not at odds with the fact that it might not have altered the distinctive character of the three-dimensional mark consisting of the shape or the appearance of those goods. Otherwise, the relatively common addition of a word element to a 3D mark, which may still facilitate the determination of the commercial origin of the goods covered, would necessarily imply an alteration of the distinctive character of that 3D mark.
• In the confectionery sector, the combination of a 3D form with additional word/figurative elements is common.  It is inconceivable from a commercial and regulatory point of view to sell the goods at issue without any label on its surface.
• The word/figurative elements were less striking and distinctive than the shape of the product. BIG BABY POP! alludes to baby's bottle shape. The stylished 'i' in the shape of baby's bottle recalls that shape, the word 'baby'  refers to users of babies' bottles and the use of a baby character refers to babies.  Further elements which indicated the taste of the product were weakly distinctive.

In light of these factors and taking into account the distinctiveness of the mark, the General Court held that the figurative/word elements did not alter the distinctive character of the contested mark even though they might have facilitated the determination of the commercial origin of the goods.  It found that the Board of Appeal erred in finding that the contested mark had merged with the additional figurative and word elements to form another sign, while the form of which the mark consisted continued to be perceived by the relevant public as indicative of the commercial origin of the goods.

What does the decision mean for you?

The case has major implications for the owners of 3D shape trade marks.  Products are rarely, if ever, used just as the shape along with no markings on the surface.  Had the decision of the EUIPO been upheld, it could have been very challenging for brand owners to establish genuine use of their 3D shape marks.

Our team comprised Roland Mallinson, Simon Jupp, Dirk Wieddekind and Daniel Wiemann.