1.- Acts. The Freixenet company applied to the Office for Harmonization in the Internal Market (OHIM) to register as a trademark the image of a glass bottle described as a "matte black frosted bottle" and another bottle described as a "white frosted bottle that, when full, of sparkling wine takes on a matte golden appearance similar to a frosted bottle. In its applications, Freixenet stated that it did not wish to obtain protection over the shape of the container, but rather over the specific appearance of its surface.
The OHIM refused registration of the applications on the grounds that they lacked distinctive character, in accordance with Article 7.1 b) of the Community Trade Mark Regulation (Regulation No. 40/94). The decision was confirmed by the OHIM Board of Appeal and subsequently by the General Court. Freixenet appealed in cassation before the Court of Justice of the European Union.
2.- Pronouncements. The Court of Justice begins by recapitulating its jurisprudential doctrine on the distinctive character of a trademark within the meaning of Article 7.1 b) of Regulation No. 40/94, in particular in relation to three-dimensional marks. According to it, given that the average consumer is not in the habit of presuming the origin of products based on their shape or that of their packaging, regardless of any graphic or textual element, only a brand that in a significant way differs of the standard or the uses of the sector and that for this reason fulfills its essential function of indicating the origin is not devoid of distinctive character.
The Court of Justice considers that this jurisprudence is also valid for the marks requested by Freixenet even though they do not claim the shape of the container but rather the specific appearance of its surface. And it concludes that the General Court made an error by not following that jurisprudence to examine the case.
The ruling indicates that the General Court, instead of verifying whether the trademarks applied for differed significantly from the standard or the practices of the sector, limited itself to observing in a general way that the color and polishing of the glass of the bottle could not function as a trademark if they were not used in relation to a word element. The Court of Justice considers that this assessment systematically leads to the exclusion of protection as a Community trademark from
all marks constituted by the shape of the packaging of the product itself that do not include a word element.
For this reason, the Court of Justice annuls the ruling of the General Court and the resolutions of the OHIM that had denied the registration of Freixenet's trademarks.
3.- Commentary.
The ruling of the Court of Justice is undoubtedly good news for beverage producers, since it confirms the possibility of registering as a Community trademark any particular and characteristic feature of a bottle, without it being necessary for it to be accompanied by a word sign. Of course, as long as it has sufficient distinctiveness, for which you will have to ensure that "it differs significantly from the norm or the uses of the sector."
Author Carlos Morán Medina
Visit our web page: http://www.elzaburu.com/
