In its Judgement of 24 February 2016, the General Court examines the distinctive character of the three-dimensional Community trade mark applied for by The Coca Cola Company, rejected by both the Examiner as well as the Board of Appeal of OHIM, and which resolves the appeal against the examiner’s decision.

The three-dimensional trade mark applied for by The Coca Cola Company refers to a bottle with the following characteristics for Classes 6, 21 and 32:

There are two reasons for the appeal by The Coca Cola Company:  Firstly, infringement of Art. 7(1)(b) of Regulation Nº. 207/2009, regarding the distinctive character of the trade mark.  The General Court emphasizes that, according to case-law, the distinctive character of a trade mark means that this must serve to identify the product or services in respect of which registration is applied for as originating from a particular undertaking, and thus, to distinguish that product from those of other undertakings. This distinctive character must be assessed in relation to the goods or services in respect of which the application has been filed and, also, by reference to perception of that mark by the relevant public, made up of the consumers of those products.

Although the criteria to establish the distinctive character of a three-dimensional trade mark is the same as that of word or figurative marks, insofar as the consumer is not used to making an assumption regarding the origin of the product by the shape of the product or its packaging, especially when referring to the case of liquid products where this is presented in packaging necessary for its marketing.  Consequently, only a trade mark that significantly differs to the norm or customs of the sector, and thereby fulfils its essential function of indicating origin, is not devoid of any distinctive character.  In this specific case a complex element made up of various characteristics is involved which, considered in isolation, does not present any type of characteristic which enables it to be differentiated from parts of other bottles and, in combination, does not endow it with distinctive character either.

The second plea is the infringement of Art. 7.3 of Regulation Nº. 207/2009, regarding the acquisition of distinctive character through use of the trade mark.  The General Court pointed out that, in line with the case-law, so as to allow registration of a trade mark under this Article, the distinctive character acquired by the trade mark must be documented by its use in that part of the European Union where it was devoid of distinctive character, and this must have been acquired prior to the date of submission of the registration application.  In the present case, given the unitary character of the Community trade mark, this should be proven throughout the EU territory as this was considered a devoid of distinctive character throughout it all.  Furthermore, it is also required that at least part of the relevant public identifies the goods or services as coming from a certain undertaking thanks to the trade mark.  In a particular case, when assessing whether distinctive character has been acquired, account must be taken of factors such as the market share held by the mark, the intensity, geographical scope and duration of the use of the mark, the amount invested by the undertaking in its promotion, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking, as well as  statements from chambers of commerce and industry or other trade and professional associations.  And finally, this distinctive character should also be assessed in relation to the goods or services in respect of which registration is sought, and in the light of the presumed perception of an average consumer of the category of goods or services, who is reasonably well informed and reasonably observant and circumspect.   In the present case, proof was provided regarding the history of the brand use, surveys, sales figures, advertising and communications investments made, photographs, articles and website extracts.  Despite this, the Court rejects the plea as it is understood that the proof is insufficient as despite being excessive in the request for evidence of the acquisition of distinctive character through use, in each of the Member States considered individually, the surveys were conducted in ten of a total of twenty-seven EU Member States, and the results of these could not be extrapolated to the other States; the sales figures submitted refer to beverages sold without specifying the packaging involved and consequently, that they are in keeping with the trade mark requested, and the advertising material does not allow for it to be determined to a  sufficient degree of certainty that this refers to the contour bottle without fluting, the trade mark in conflict, and not to the contoured bottle with fluting, a registered trade mark that is not subject to conflict, as well as the fact that many of the images were taken outside the European Union or at unknown locations. Finally, no proof of acquisition of distinctive character was submitted with regard to the contested goods other than non-alcoholic beverages.

In conclusion, the three-dimensional trade mark requested is devoid of distinctive character as its separate elements, as well as combined elements, do not significantly differ from the usual customs and do not allow the association of the goods as originating from a specific undertaking, and The Coca Cola Company had not been able to prove the acquisition of distinctive character through use as the proof submitted is not evidence of this for all the Member States or the majority of these, the evidence submitted does not allow for the identification of the trade mark in conflict, and no proof of such acquisition has been provided for the rest of the goods applied for, for which reason the General Court totally dismisses the Appeal.