On the way to improving the protection of 3D trademarks in the European Union

We are all aware of the rigor of the EUIPO and the Court of the European Union with regard to 3D trademarks. In fact, they have demonstrated in recent years their reluctance to grant protection to such trademarks, particularly in the field of food products and beverages.

The following signs have been rejected at the deposit step or considered as non-distinctive in the case of a litigation:

On December 7th, 2015, the German company WAJOS GmbH filed an application for an EU trade mark registration for a three-dimensional sign consisting of a translucent amphora shape, characterized in particular by a very large bulge on the middle part, which includes a relief ring, the lower part of the amphora narrowing and ending in a tip shape. See below the trademark as filed.


The trademark was filed in classes 29, 30, 32 and 33 for food products such as oils, milk, coffee, tea, non-alcoholic drinks and different kinds of alcoholic beverages.

The examiner in charge of the application at EUIPO, like the Board of Appeal, rejected the mark for lack of distinctiveness. It is concluded that the products in question were intended for the general public, professionals and business customers and that, depending on the nature of the products concerned, the level of attention of the relevant consumers was medium to high.

The Board of Appeal thus finds, in substance, that the trade mark applied for consisted of a variant of the usual form and presentation of the goods concerned.

Before dealing with the approach of the Court of the European union in this affair, it should be recalled that signs without distinctive character are deemed incapable of performing the essential function of the mark, namely that of identifying the origin of the goods or services.

This distinctive character of a trade mark must be assessed, on the one hand, in relation to the goods or services for which registration has been applied for and, on the other hand, in relation to the perception of the relevant public, which is the average consumer of those goods or services, normally informed and reasonably attentive and prudent.

The assessment of distinctiveness in this affair by the Court of the European Union differs from that of the EUIPO and the Board of Appeal. A relaxation seems to be observed in favor of three-dimensional trademarks.

The Court notes that food operators are confronted with the technical requirement of packaging for the marketing of products and are subject to labelling requirements as well. From this point on, a need emerges to make products identifiable in relation to those of competitors. The Court therefore holds that the average consumer is fully capable of perceiving the shape of the packaging of the products concerned as an indication of their origin.

Moreover, an interesting point should be noted, as recalled by the Court: stricter criteria should not be applied when assessing the distinctive character of three-dimensional marks consisting of the shape of the goods themselves or the shape of the packaging of those goods in relation to the criteria applied to other categories of marks.

Naturally, for three-dimensional marks, the closer the shape applied for comes to the most likely shape of the product in question, the more likely it is that the shape is devoid of distinctive character.

In the present case, the Court considers that the Board of Appeal relied on an erroneous perception of the characteristics and nature of the mark filed in order to rule on its distinctiveness.

The analysis of the overall impression produced by the appearance of the amphora filed here as a trademark leads the Court to retain its distinctive character.

Indeed, according to the Court, the combination of the elements that make up the trademark is truly specific and cannot be considered common; the trademark has a “remarkable shape” which, taken as a whole, is easily memorable by the relevant public.

The Court went so far as to say that the bulge separating the wider upper part from the narrower lower part gives aesthetic value to the mark applied for.

Thus, given the exceptional nature – in view of the habits in the sectors concerned – of a presentation of food products in the form of the trade mark filed makes it possible for the latter to indicate the commercial origin of the products concerned.

In view of the above, it seems that we are on the way to improving the protection of 3D trademarks in the European Union since the assessment of their distinctive character appears more flexible in the present case. We will soon see if this is a new trend or if it is part of isolated cases.

Comforting the present case and prior to it, the bottles of Processo Wine of the brand Bottega were registered in the European Union giving a clue on the improving of the protection of the 3D marks.

However and without puns, we should keep in mind that the form of filing is crucial to grant protection to the 3D trademark. Indeed, before filing, a reflection must be conducted on how to file to tip the balance of distinctiveness in your favour.

And, if the registration of a trademark offers a presumption of its distinctiveness, the application must be irreproachable in order to claim a monopoly on form in the context of a dispute. The shape of the 3D sign should not be interfered with by other elements, because we see many cases of registered trademarks that are difficult to enforce in litigation, due to the complexity of the sign.