When assessing the presence of a distinctive character of the product shape, the decision-making practice and approaches of EU institutions regarding providing legal protection to three-dimensional trademarks (3D trademarks) are not consistent and unambiguous. Thus three-dimensional trademarks may be difficult to register.
Finally, one of the main issues is the practicality and legitimacy of acquiring 3D trademark protection rather than industrial design protection and the legitimacy of extending longer legal protection because trademarks, unlike industrial designs, can be subject to legal protection for a longer period. Obtaining protection for packaging is also a legal technique to monopolize that form.
3D trademarks are registrable under European Union law if they meet the standards set out in Article 7(1)(b) of Regulation (EU) 2017/1001 (EUTMR), which defines the absolute grounds for registration denial.
Concerning product shapes, Article 7(1)(b) of the EUTMR specifies three specific absolute grounds for refusal, prohibiting registration of signs consisting solely of I the shape, or another characteristic, which results from the nature of the goods themselves; (ii) the shape, or another characteristic, of goods which is required to obtain a technical result; (iii) the shape, or another characteristic, which gives substantial value to the goods; “. If a sign fails to meet these conditions related to the mark’s essential features, it will be permanently barred from protection.
Registering 3D trademarks must determine whether the declared 3D trademark adequately varies from other shapes in a given field.
A 3D trademark’s distinctive color scheme can be considered when determining its distinctiveness, according to current practice, as it may significantly impact how the relevant good is perceived.
The Absolut Company Aktiebolag submitted a 3D mark (the shape of a bottle) as a EUTM in 2019, seeking registration for goods in Class 33. According to the EUIPO, the application was rejected in 2021 because “the relevant consumers would consider the sign applied for, as a whole, as non-distinctive and not as the trademark of a particular proprietor.” The signs’ features don’t stick out or catch the eye enough to give the overall impression of being significantly different from the norm and customs in the relevant market.
The applicant challenged the judgment, and the EUIPO Fifth Board of Appeal (the Board) decided that the vodka bottle from Absolut was distinctive enough to qualify as a trademark.
After overturning the disputed judgment, the Board reasoned that:
- Therefore, the claimed surface design is incapable of being quickly and easily remembered by the target market as a distinctive sign, did not deviate significantly from the forms and customs currently on the market, and the closure of the bottle is in color “copper.”
Additionally, the rectangular shape is a basic geometrical shape common for bottles.
The Board did point out that the color scheme of the 3D trademark parts (the front label, “copper,” and the copper-colored neck foil (neck wrapper)) “cannot be characterized either as solely ‘decorative.'” These extra components significantly influence the perception of the bottle’s overall shape. Particularly, these components are colored in various tones or subtleties ranging from copper to brown or gold. This coloring covers a significant portion of the bottle and significantly affects how the bottle’s overall shape is perceived.
The color scheme will be seen as eye-catching and startling due to its magnitude and predominance rather than as a purely aesthetic “decoration” of the stated items. As a result, these components make it possible for the general public to connect with the vodka maker.Given the previous, a trademark’s color scheme can significantly decide whether a 3D trademark is distinctive. In addition, a shape used as a 3D trademark must differ significantly from what is currently on the market. To obtain legal protection for the 3D trademark, distinctive color combinations, and unique product package designs can be sufficient.