CFI gives 'colourful tips' on how to assess distinctiveness of 3D marks

This is a decision of the Court of First Instance (CFI) in the case of Louis M. Gerson v OHIM – 10 September 2008 concerning an objection based on a lack of distinctive character objection under Article 7(1)(b) of the Community Trade Mark Regulation (CTMR) relating to a Community Trade Mark application for a three dimensional mark consisting of a paint filter coloured yellow near the tip. In its decision the CFI reaffirms the established case law on the assessment of distinctiveness in relation to three dimensional trade marks.

Louis M. Gerson Co., Inc (Gerson) manufactures “synthetic colour-coded paint strainers” - a feature of which is a coloured tip to the filter with the colour indicating the fineness of the filter. Gerson applied for four Community Trade Mark registrations.In each case the mark was a three dimensional mark represented by two pictures (see below).

In each application the coloured filter tip was a different colour.This particular case follows the application for the yellow coloured tip.The application was for goods in classes 16 and 21 including paint strainers and filters.The Community Trade Mark Office ("OHIM") objected to the application under Article 7(1)(b) CTMR in that the sign lacked distinctive character.Gerson appealed this decision first to the Board of Appeal and then to the CFI.

In its judgment the CFI set out the settled case law for assessing distinctive character under Article 7(1)(b) and in particular the distinctive character of three dimensional marks:

·The criteria for assessing distinctive character of three dimensional trade marks are no different from those applicable to other categories of trade mark.However when those criteria are applied, account must be taken of the fact that the perception of the average consumer is not necessarily the same in relation to a three dimensional mark consisting of the appearance of the goods themselves.

·The more closely the shape for which registration is sought as a trade mark resembles the shape most likely to be taken by the product in question, the greater the likelihood of that shape being devoid of any distinctive character.

·Only a mark which departs significantly from the norms or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of distinctive character.

In applying the criteria to this case the CFI held:

·The shape of the mark applied for was very similar to competing goods on the market and the shape did not have any element that could be said to depart perceptibly from one of the most common shapes of such a product.

·The use of colour on the tip did not enable the average consumer to distinguish the products concerned from those of other undertakings without conducting an analytical examination and without paying particular attention. In particular the court felt that the use of colour would be perceived as indicating the tip or as a decorative element but not as a distinctive element. The use of the colour might possibly serve to distinguish between the quality or the size of different models of the same product, but is not distinctive as regards its trade origin. 

·The CFI agreed with OHIM’s analysis that the relevant public would not just be specialists and so they might not necessarily be aware of the existence of coloured and non coloured paint filters and so it couldn’t be concluded that the target public would immediately identify the goods as coming from Gerson just because they were the only manufacturer of coloured filters.

·The CFI also held that even if the target consumers could be expected to know that only Gerson produced coloured paint filters this was still not enough.The CFI felt that Gerson’s argument in respect of colour was not that they were known as the company who applied the particular yellow colour to their goods but rather that they were known as the company who applied colour to their goods. The CFI felt that in that case registration on that basis would unduly restrict the availability of colours for competitors and it was settled case law that in assessing distinctiveness of a given colour as a trade mark one must consider not unduly restricting the availability of colours for other traders offering goods of the same type.

Case comment

In this case the CFI reiterated the established case law on the assessment of distinctiveness and in particular the criteria to be considered in relation to three dimensional marks and in relation to colours. It serves to remind brand owners of the practical difficulties of obtaining registered trade mark protection for marks that closely resemble the shape of their product.

Additionally, whilst not addressed in this decision, we feel it is interesting that OHIM did not also object to Gerson’s mark as a shape mark (Article 7(1)(e) of the CTMR) (unlike two of the key cases in this area of law with Proctor & Gamble and Henkel) and despite the "shape" being referred to throughout, OHIM focused solely on the objection based on lack of distinctive character.

Boult Wade Tennant    

Back to Bulletins index