The EU General Court issued a decision on 24 February rejecting Coca-Cola's Community Trade Mark (CTM) application for the shape of a bottle.
Coca-Cola has successfully registered a number of 3D marks in the past, including their signature bottle which has narrow groves and fluting. The mark of the new application includes a bulge in the centre but no ridges.
The new application was filed on 29 December 2011, covering metallic bottles in class 6, glass and plastic bottles in class 21 and drinks in class 32.
OHIM rejected the application on the grounds that the mark was devoid of distinctive character. Coca-Cola appealed against the decision arguing that the mark was a natural progression from its famous bottle. The appeals board upheld the rejection and Coca-Cola again appealed, arguing that the mark had acquired distinctiveness through use.
The General Court held that Coca-Cola had failed to show that the shape had acquired distinctive character through use, arguing that the bottle does not possess any characteristics that distinguish it from other bottles on the market.
Although previous case law states that the criteria for assessing the distinctive character of a shape mark is not different to other categories of trade marks, the average consumer will not recognise the shape of goods as a trade mark in the absence of any word or logo.
Distinctiveness of Shape Marks
The decision follows other recent cases refusing the protection of shape marks. Nestlé failed to register the shape of their four fingered bar. Mr Justice Arnold said in this ruling that
"in these circumstances it seems likely that consumers rely only on the word mark KitKat and the other word and the pictorial marks used in relation to the goods in order to identify the trade origin of the products. They associate the shape with KitKat (and therefore with Nestlé), but no more than that". For the purposes of registrability, it must be considered whether consumers would rely on a mark as a badge of origin.
It seems that surface decoration will improve the chances of registering a shape mark rather than just the shape of the goods themselves.
It is yet to be seen whether Coca-Cola will file an appeal before the European Court of Justice.in: News, Trade Marks