Weldebrau lose their bottle in opposition to Kofola mark

Alexandra Ellis, Trade Mark Attorney, Boult Wade Tennant

This article first appeared in the May 2010 issue of ITMA Review. Click here to read this article in PDF format.

In 2003, the intervener, Kofola Holding AS filed a Community trade mark application. it was described as "a bottle of cylindrical form [with] a narrowed, helically formed neck and its cylindrical part is labelled 'snip'".

Registration was sought in respect of goods in classes 30, 32, and 33, covering essentially beverages. 

The application was opposed in 2004 by Weldebrau GmbH & Co KG on the basis of Community trade mark registration no 690016.

The goods covered by the earlier mark fell within class 21 ("boxes of glass, bottles, jugs (not of precious metal"), class 32 ("beers, mineral and aerated waters, fruit drinks and fruit juices, syrups and other preparations for making beverages, ale porter") and class 33 ("alcoholic beverages (except beer), liqueurs, spirits, wine").

The opposition was based on Article 8(1)(b), and was rejected by OHIM's Opposition Division in 2006. Weldebrau appealed this decision, and in 2007 OHIM's Fourth Board of Appeal dismissed the appeal.

Appeal to the General Court
Weldenbrau then asked the General Court to annul the contested decision alleging a breach of Article 8(1)(b).

Similarity of the marks
The General Court noted that two three-dimensional signs were at issue, consisting of a body of a bottle of cylindrical form and a helically formed neck. The sign applied for also included the word element 'snipp' engraved on the lower part of the body of the bottle in small lettering, and in the same colour as the bottle.

The court reiterated the Board of Appeal's view that no phonetic comparison could be made since the earlier mark did not contain any word element. The court also confirmed that as the world element 'snipp' was minor in size and engraved on the bottom part of the sign applied for, it was not liable to affect the overal impression produced by the mark. A conceptual comparison was also deemed impossible since the marks did not convey any meaning.

The marks could therefore only be compared visually. The Board of Appeal had held that an overall visual comparison of the two signs showed several significant differences, taking into account the fact that the width and length proportions were different, the fact that there was an additional word element in the mark applied for, and given that the shapes of the necks of the bottles were "very different".

The General Court agreed and stated that whilst the 'snipp' element was unlikely to have an effect on the overall impression produced by the mark, and although both of the necks of the bottles were helically formed and could therefore be distinguished form traditional necks, in the courts' opinion, the fact remained that the overall visual impression was of various "significant differences" between the signs at issue.

In particular, the earlier sign was deemed to be "longer, slimmer and therefore more delicate" than the sign applied for, which had a "smaller, thicker and more corpulent silhouette", giving a "more bulky impression". Additionally, in the case of the applied for mark, the shape of the body of the bottle was conisdered "irregular because of its curvy form, whereas that of the earlier sign is straight". Finally, the necks, although both helical, were considered to have different spirals. The neck of the earlier mark was considered thinner and consisting of only two helical turns, whereas the new application's neck was considered wider and consisting of at least four helical turns. The fact that the neck of both bottles could be described as "helical-shaped" was therefore viewed as of very little relevance.

In view of the foregoing, the General Court confirmed that the Board of Appeal was correct to decide that there were significant differences between the signs, and concluded that there was only a "low degree of visual similarity" between the signs.

Likelihood of confusion
The Board of Appeal found that the earlier mark had an average degree of distinctiveness, which was not disputed by Weldebrau. Weldebrau did argue that the mark had at least an average degree of distinctiveness in view of its unique and unusual appearance, apparently confirmed by prizes received for the special design of the bottle. Nevertheless, the General Court noted that the applicant had not submitted anything proving that its mark had acquired distinctiveness by virture of intensive use or its reputation.

In the General Court's view, as the signs had significant differences and as Weldebrau had not demonstrated in what way their mark was highly distinctive, "the mere fact that the two bottles have a helically formed neck" did not lead to a likelihood of confusion, despite the fact that some of the goods in question were identical.

Finally, the court noted that Weldebrau's arguments that the "tactile impression" of the marks played an important role, did not affect the conclusion that there was no likelihood of conufsion. In the court's opinion, the selling arrangements for the bottles, namely their display as labelled goods in the food aisles of supermarkets, or their being ordered in a bar or restaurant, meant that prior to purchase the consumer would concentrate mainly on the word and figurative elements on their labels, such as the trade mark's name and logo.

The appeal was therefore dismissed in its entirety.

Conclusion
As decisions on the scope of protection of three-dimensional trade marks are relatively rare, this case provides some useful guidance on OHIM and the General Court's approach and assessment of the same. Whilst it seems that the General Court's reference to the selling arrangements of the bottles could be called into question (is it not understood practice that marks should be compared as they are applied for/registered, irrespective of their possible or actual use?), it seems unlikely that this reference would have changed the court's opinion that, in the absence of evidence demonstrating that the earlier mark was highly distinctive, an identity of goods did not make up for what were considered to be "significant differences" between the marks in question.

Boult Wade Tennant