The question of the required degree of deviation of the trade mark applied for from the norm or from what is customary in the trade in order to give it the necessary distinctive character, which has long been the subject of controversy, has now been clarified: The CJEU had initially stated - in the context of the examination of descriptive indications in a word mark - that any recognisable deviation in the wording of a word combination applied for from the expression used in the customary usage of the relevant public to designate the essential characteristics of the product was capable of conferring on a word combination the distinctive character required for its registration as a trade mark.[1] Later - in the context of the examination of three-dimensional trade marks - the CJEU ruled that a mere deviation from the standard or the customary usage in the trade was not sufficient to remove the ground for refusal of lack of distinctive character. Only a trade mark that deviates significantly from the norm or from what is customary in the sector and therefore fulfils its essential function as an indication of origin is not devoid of distinctive character.[2]
In the case of a shape mark such as the bottle shape
it is therefore not sufficient to state that bottles are usually sold with a label so that the matting of the bottle surface cannot function as a trade mark.[3]
In the meantime, the CJEU has been able to clarify that the standard of significant deviation from what is customary in the sector only applies in exceptional cases. The formula only applies to shape marks and trade dress,[4] because in the case of other trade marks - in particular word marks - the public regularly pays attention to details and registers all deviations from customary usage, unlike in the case of shape marks. Therefore, any recognisable deviation usually also constitutes a significant deviation.[5]
For example, the minimal difference between the words ‘dog’ and ‘hand’ is immediately registered. The public also recognises the difference between the active ingredient name ‘omeprazole’ and the trade mark ‘OMEPRAZOK’, insofar as it is familiar with the active ingredient name at all. The difference is therefore significant and gives the sign sufficient distinctive character.[6] In any case, the public will perceive the trade mark ‘Neuschwanstein’ only as a designation of the sight and not as a distinctive sign for goods that can be sold as souvenirs.[7] On the other hand, the public is unlikely to attribute an origin-indicating meaning to a usual combination of common geometric shapes and colours on the green/white or red/white detergent tablets
This would, on the contrary, lead to significant deviations from the trade mark. Rather, this would require considerable deviations from what is customary in the industry.[8] These are - to a large extent - even missing from the tablets
which - originally and by no means customary in the industry - combine rectangular and triangular, oval or flower shapes.[9] The bottle shape
also deviates from what is customary in the industry in the design of the side recesses; however, the deviation is not significant.[10] The same applies to the packaging
for cigarettes, especially as there is a certain variation of pack shapes on the market.[11] On the other hand, the GC considered the deviations from the industry standard in the bottle shape
with a rounded bottom and a bulge in the centre of the bottle[12] to be significant - doubtful because the features are typical for a bottle that does not stand but hangs in a holder.
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On the other hand, it cannot be inferred from the requirement of a certain distance from what is customary in the trade that a sign must show a certain level of linguistic or artistic creativity or imagination by the trade mark proprietor.[13] Furthermore, lack of distinctiveness does not result from the mere fact that a sign lacks imagination,[14] is neither unusual nor striking[15] or neither peculiar nor original.[16] Nor is the fact that the sign could ordinarily be used in the course of trade for the presentation of the products concerned a criterion in the examination of distinctiveness.[17] A trade mark does not necessarily arise from a creation and is not based on an element of originality or imagination, but on its ability to distinguish the products in question on the market from similar products of competitors.[18] Furthermore, there are no such originality requirements in the legal text itself.[19]
The fact that the slogan ‘The principle of comfort’, for example, does not show an excess of imagination does not therefore automatically lead to the slogan for furniture being devoid of distinctive character.[20]
Footnotes
CJEU C-383/99 P of 20 September 2001 Baby-dry, ref. no. 40; see also CJEU T-360/99 of 26 October 2000 Investorword, ref. no. 23.
↩CJEU C-218/01 of 12 February 2004, Henkel, ref. 49; CJEU C-456/01 P and C-457/01 P of 29 April 2004, Three-dimensional tablet shape I, ref. 39; CJEU C-468/01 P to C-472/01 P of 29 April 2004, Three-dimensional tablet shape II, ref. 37; CJEU C-473/01 P and C-474/01 P of 29 April 2004, Three-dimensional tablet shape III, ref. 37; CJEU C-144/06 P of 4 October 2007 Red and white rectangular tablet with a blue oval core, ref. 37; CJEU C-546/10 P of 13 September 2011 Wilfer, ref. 54; CJEU C-445/13 P of 7 May 2015 Voss of Norway, ref. 81; EFTA Court E-5/16 of 8 April 2017 Municipality of Oslo, ref. 135.
↩CJEU C-345/10 P of 20 October 2011 Freixenet, ref. 50 f.
↩CJEU C-456/19 of 8 October 2020 Aktiebolaget Östgötatrafiken, ref. 40 f.
↩Thus now expressly CJEU C-622/13 P of 30 April 2015 Castel Frères, para. 67; in this sense already CJEU C-144/06 P of 4 October 2007 Red and white rectangular tablet with a blue oval core, para. 37; CJEU C-238/06 P of 25 October 2007 Develey, para. 81 ("In such circumstances . . . ’).
↩BGH GRUR 2002, 540, 541 OMEPRAZOK; also BGH GRUR 2005, 258, 259 Roximycin.
↩BGH I ZB 13/11 of 8 March 2012 Neuschwanstein, ref. 13 ff.
↩See CJEU C-218/01 of 12 February 2004, Henkel, ref. 49; CJEU C-456/01 P and C-457/01 P of 29 April 2004, Three-dimensional tablet shape I, ref. 39; CJEU C-468/01 P to C-472/01 P of 29 April 2004, Three-dimensional tablet shape II, ref. 37; CJEU C-473/01 P and C-474/01 P of 29 April 2004 Three dimensional tablet shape III, ref. 37; CJEU C-144/06 P of 4 October 2007 Red and white rectangular tablet with a blue oval core, ref. 37.
↩GC T-129/00 of 19 September 2001 Tablet for washing machines or dishwashers XI, para. 68, unfortunately confirmed in the essential considerations by GC C-473/01 P and C-474/01 P of 29 April 2004 Three dimensional tablet shape III; GC T-398/04 of 4 August 2004 Red-white rectangular tablet with a blue oval core, confirmed by CJEU C-144/06 P of 4 October 2007 Red-white rectangular tablet with a blue oval core, ref. 4.10.2007 Red and white rectangular tablet with a blue oval core; GC T-241/05, T-262/05 to T-264/05, T-346/05, T-347/05, T-29/06 to T-31/06 of 23.5.2007 Square white tablets with coloured flower pattern, ref. 66 ff.; but also BPatG 26 W (pat) 2/01 of 23.6.2004 on distinctive detergent capsules.
↩CJEU C-238/06 P of 25 October 2007 Develey, ref. 88 ff.
↩GC T-140/06 of 12 September 2007 Shape of a packet of cigarettes, ref. 21 ff. and 50 ff., confirmed by CJEU C-497/07 P of 27 June 2008 Philip Morris Products.
↩GC T-313/17 of 3 October 2018 Wajos, confirmed in conclusion by CJEU C-783/18 P of 12 December 2019 EUIPO/Wajos.
↩GC C-329/02 P of 16 September 2004 SAT.2, ref. 41; GC C-265/09 P of 9 September 2010 OHIM/BORCO-Marken-Import, ref. 38; GC C-51/10 P of 10 March 2011 Agencja Wydawnicza Technopol v OHIM, ref. 31; similarly previously GC T-138/00 of 11 December 2001 DAS PRINZIP DER BEQUEMLICHKEIT, ref. 45.
↩GC T-135/99 of 31 January 2001 CINE ACTION, para. 31; GC T-136/99 of 31 January 2001 CINE COMEDY, para. 31; GC T-87/00 of 5 April 2001 EASYBANK, para. 39; GC T-140/00 of 3 October 2001 New Born Baby, para. 41; GC T-138/00 of 11.12.2001 THE PRINCIPLE OF COMFORT, ref. 44; GC T-34/00 of 27.2.2002 EUROCOOL, ref. 45; GC T-79/00 of 27.2.2002 LITE, ref. 30; GC T-360/00 of 9.10.2002 UltraPlus, ref. 9.10.2002 UltraPlus, ref. 45; GC T-242/02 of 13.7.2005 TOP, ref. 91; GC T-320/03 of 15.9.2005 LIVE RICHLY, ref. 91; GC T-123/04 of 27.9.2005 CARGO PARTNER, ref. 46; GC T-695/14 of 3.12.2015 Omega International, ref. 3 December 2015 Omega International, ref. 32 ff.; BGH GRUR 2000, 321, 322 Radio von hier; BGH GRUR 2000, 323 f. Partner with the Best; BGH GRUR 2002, 1070, 1071 Bar jeder Vernunft.
↩GC T-87/00 of 5 April 2001 EASYBANK, ref. 39; GC T-360/00 of 9 October 2002 UltraPlus, ref. 45; GC T-123/04 of 27 September 2005 CARGO PARTNER, ref. 46.
↩GC T-242/02 of 13 July 2005 TOP, ref. 91; GC T-15/05 of 31 May 2006 Form einer Wurst, ref. 38; BGH GRUR 2000, 722, 723 LOGO; BGH GRUR 2001, 56, 57 f. Liqueur bottle; BGH GRUR 2001, 239, 240 Zahnpastastastrang; BGH GRUR 2001, 334, 336 f. Gabelstapler I; Erdmann GRUR 2001, 609, 612; originality is of course also not harmful GC T-460/05 of 10 October 2007 Form eines Lautsprechers, ref. 43.
↩CJEU C-329/02 P of 16.9.2004 SAT.2, ref. 36; CJEU C-173/04 P of 12.1.2006 Deutsche SiSi-Werke, ref. 63; also CJEU C-37/03 P of 15.9.2005 BioID, ref. 61 f.
↩GC T-34/00 of 27 February 2002 EUROCOOL, ref. 45; GC T-79/00 of 27 February 2002 LITE, ref. 30; GC T-320/03 of 15 September 2005 LIVE RICHLY, ref. 91; on the other hand, an imaginative design naturally helps to achieve a sufficient distance from what is customary in the industry: see GC T-133/06 of 23 October 2008 PAST PERFECT, ref. 44 ff.
↩GC T-87/00 of 5 April 2001 EASYBANK, ref. 40.
↩CJEU T-138/00 of 11 December 2001 DAS PRINZIP DER BEQUEMLICHKEIT, ref. 44; in conclusion also CJEU C-64/02 P of 21 October 2004 DAS PRINZIP DER BEQUEMLICHKEIT.
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