Bongrain SA's Trade Mark Application (No.2134604)
| Jurisdiction | England & Wales |
| Judge | Lord Justice Longmore,Lord Justice Potter |
| Judgment Date | 17 December 2004 |
| Neutral Citation | [2004] EWCA Civ 1690 |
| Docket Number | Case Number: A3/03/0752 |
| Court | Court of Appeal (Civil Division) |
| Date | 17 December 2004 |
[2004] EWCA Civ 1690
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL APPEALS DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
(CHANCERY DIVISION)
The Hon Mr Justice Pumfrey
Ch/2002/APP/0148
Royal Courts of Justice
Strand, London, WC2A 2LL
Lord Justice Potter
Lord Justice Longmore and
Lord Justice Jacob
Case Number: A3/03/0752
Simon Malynicz (instructed by Eversheds) for the Appellant
Daniel Alexander QC (instructed by Treasury Solicitor) for the Respondent
Registrar of Trade Marks
Jacob LJ:
This appeal is from the judgment of Pumfrey J [2003] EWHC 531(Ch). He upheld the decision of Mr A.J. Pike, the Hearing Officer acting for the Registrar of Trade Marks who refused application number 2,134,604 by Bongrain SA. In short, trade mark (and hence perpetual) protection is sought for the shape of a cheese as shown in the pictures accompanying the application.
These are the pictures:
The specification of goods for which registration was originally sought was "Cheese; dairy products; all included in Class 29." The applicants have offered to limit this to "cheese."
The application form contains the following words:
"An application for a series of two three-dimensional marks. The first mark in the series consists of a three-dimensional shape as shown in the representation on the left hand side of the sheet. The second mark in the series consists of a three-dimensional shape with a "ridged effect" on the surface as shown in the representation on the right. The wording on this sheet does not form part of the marks."
Protection is sought whatever the colour of the cheese or its rind or wrapping (if it has wrapping) and irrespective of any label which in real life would almost certainly be attached to the cheese at least at the point of sale.
Aldous LJ granted permission to appeal as long ago as 1 May 2003. He did so on the basis that the appeal raised an important point of law. However, before the matter came before this court it was apparent that guidance on the question of the registration of three-dimensional marks was likely to be given in a number of cases before the European Court of Justice ("ECJ"). So this appeal was stood out until they were decided. That was an obviously better course than referring to the ECJ questions which were likely to be decided anyway.
I set out here the cases to which I shall refer later in this judgment, along with a subject-matter summary. I divide them into two groups, allowed and disallowed. In the case of decisions on a reference I allocate the case to one of the two groups according to the effect of the decision because, of course, the ECJ does not actually decide the outcome itself. Unless otherwise stated the cases are decisions of the ECJ rather than the Court of First Instance ("CFI").
Disallowed
Henkel v OHIM, Joined Cases C-456/01 P and C-457–01 P, 29 th April 2004 (rectangular detergent blocks with three coloured layers);
Linde v Deutches Patent-und-Markenamt, Joined Cases C-53–55/01 [2003] RPC 45 (shapes of a fork-lift truck, a torch—what the Americans call a flashlight—and a wrist-watch);
Mag Instrument v OHIM, Case C-136/02, 7 th October 2004 (torches);
Koninklijke KPN Nederland v Benelux Merkenburea Case C-363/99 12 th February 2004 (word "Postkantoor" meaning "post office");
OHIM v Erpo Möbelwerk Case C-64/02/P, 21 st October 2004 ("Das Prinzip der Bequemlichkeit" TM—a slogan meaning in English "the principle of comfort" for all sorts of things including furniture, tools, cars and others).
Allowed
Libertel v Benelux-Merkenbureau, Case C-104/01 [2004] FSR 65 (Colour (orange) allowable in principle on proof of actual distinctive character, but a general interest in availability of colour should be taken into account);
Nestlé Waters France v OHIM, Case T-305/02 [2004] ETMR 41 p.566 (plastic bottle with spiral wavy grooves and bobbin-shaped upper part). CFI decision;
Henkel v OHIM, Case T-393/02, 24 th November 2004 (thin, inverted crystal-shaped bottle). CFI decision.
The Relevant Provisions
In accordance with my usual practice I do not use the numbering of those provisions in the UK Trade Marks Act which enact the provisions of Directive 89/104/EEC. The language is the same and use of our local numbering merely makes our judgments less intelligible in the wider European context. Art. 2 says:
"A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings."
Art.3 so far as is material says:
"1. The following shall not be registered or if registered shall be liable to be declared invalid –
(a) signs which cannot constitute a trade mark;
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;
(e) signs which consist exclusively of:
—the shape which results from the nature of the goods themselves, or
—the shape of goods which is necessary to obtain a technical result, or
—the shape which gives substantial value to the goods;
3. A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character. Any Member State may in addition provide that this provision shall also apply where the distinctive character was acquired after the date of application for registration or after the date of registration."
The following matters were common ground:
(a) a shape of goods, in principle, may be registrable. So much is made explicit by Art. 2;
(b) the shape of goods will be registrable provided it does not fall within one or more of the criteria set forth in Art. 3.1;
(c) since a shape of goods is in principle registrable, the application passes the first of the criteria in Art.3.1—it is not a sign which "cannot constitute a trade mark";
(d) the inquiry into "distinctive character" (Art. 3.1(b)) is to be carried out at the date of application for registration—in this case 3 rd June 1997;
(e) that inquiry will involve a consideration of the nature of the mark applied for to assess its inherent distinctive character. If that is insufficient, nonetheless evidence may show that at the date of application it has acquired a distinctive character by use (Art. 3.3). In short, has the mark, by nature or nurture a distinctive character? Passing either test will do.
(f) the legal test for "distinctive character" is in principle the same for all types of mark. As the ECJ said in Henkel (detergent blocks) para. 38:
"The Court of First Instance was also correct in stating that the criteria for assessing the distinctive character of three-dimensional shape-of-products marks are no different from those applicable to other categories of trade mark."
The Court was even more explicit on the point in Linde, para. 46:
"As regards Art. 3(1)(b) of the Directive, neither the scheme of the Directive nor the wording of that provision indicates that stricter criteria than those used for other categories of trade mark ought to be applied when assessing the distinctiveness of a three-dimensional shape of product mark."
(g) That legal test was explained by the Court in two important paragraphs in Linde:
"40. For a mark to possess distinctive character within the meaning of that provision it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from products of other undertakings (see Phillips, para.[35]).
41. In addition, a trade mark's distinctiveness must be assessed by reference to, first, the goods or services in respect of which registration is sought and, second, the perception of the relevant persons, namely the consumers of the goods or services. According to the Court's case law, that means the presumed expectations of an average consumer of the category of goods or services in question, who is reasonably well informed and reasonably observant and circumspect (see Case C-210/96 Gut Springenheide and Tusky [1998] E.C.R. I-4657, para.[31], and Phillips, para.[63])."
(h) As a practical matter, however, it will harder to show that a three dimensional mark passes the test. This is because, in the Court's words in Linde, para 48:
"It is nevertheless true, as the Austrian and UK Governments and the Commission rightly argue, that in view of the test set out in paras [40] and [41] of this judgment it may in practice be more difficult to establish distinctiveness in relation to a shape of product mark than a word or figurative trade mark. But whilst that may explain why such a mark is refused registration, it does not mean that it cannot acquire distinctive character following the use that has been made of it and thus be registered as a trade mark under Art.3.(3) of the Directive."
It re-stated this point in paragraphs 38 and 39 of Henkel (detergent blocks):
"38. It...
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