With its products widely used through its business-to-business supply of packaging containers and materials, Tetra Laval Holdings & Finance SA successfully registered a 3D trade mark in 2000 for its most well-known octagonal carton. After enjoying 22 years of protection, Chinese competitor Lami Packaging (Kunshan) Co. Ltd filed for the mark to be invalidated pursuant to articles 7(1)(e)(ii) & 51(1)(b) of the EU Trade Mark Regulations, being that the 3D shape of the carton was necessary to obtain a technical result and that the registration was made in bad faith, respectively.
In first instance, the Cancellation Division of the EUIPO upheld Lami’s invalidation action on the basis that the shape of the carton was necessary to obtain a technical result. This decision was then overturned in Tetra’s appeal to the EUIPO’s Board of Appeal. Lami subsequently appeal that decision to the General Court, which ultimately reversed the Board of Appeal’s decision and upheld the Cancellation Division’s appeal. It was held that the 3D trade mark had four essential characteristics, namely that the carton was a “brick” with four wall panels and four angled corners to create the shape of an octagon, with these corners being concave, with the walls of the carton narrowing in the centre and flaring upwards and downwards, and that the top of the “brick” featured a fin that sealed the shape together.
The General Court found that the shape of the carton reduced the amount of material necessary for manufacturing and reduced shipping costs through optimising weight while maintaining the volume of the inside of the carton, while the sealing fin guaranteed aseptic processing for a longer product-shelf life. The General Court also found that technical results achieved by the manufacturing process were irrelevant, and that only the shape and other characteristics of the goods were to be considered when determining whether a 3D mark obtains a technical result.
From a commercial perspective, the General Court also used Tetra’s own advertising in making its decision, given that Tetra widely publicised that its carton enjoyed varying technical functions. While decisions of the EUIPO and General Court are no longer binding on the UK, the outcome of this case may persuade the UKIPO in its future decisions in invalidation proceedings, if raised.
If you have any questions on the above, or if you need any advice or support in respect of your own Intellectual Property, please do not hesitate to contact the team at McDaniels Law on 0191 281 4000 or legal@mcdanielslaw.com.
