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no just ‘desserts’ for product shape trade mark

26 September 2014

To be registrable a trade mark must not be devoid of any distinctive character; a hurdle that can be overcome if the mark has acquired a distinctive character as a result of its use.

Dessert CupsYesterday the EU General Court dismissed an appeal against a decision that a three-dimensional Community trade mark (CTM)for shape of the packaging of products, registered for desserts, ice creams, sorbets and yoghurts (left) was devoid of distinctive character, and had failed to acquire distinctive character through use.

It is only when a shape mark differs considerably from the norm or custom in the relevant sector that an average consumer can distinguish the goods concerned from those of other undertakings; without showing that the public regard your shape alone as a badge of trade origin you cannot establish distinctive character.

The difficulty faced by this applicant was the fact that the products were inexpensive everyday consumer products to which consumers did not give a high level of attention at the point of purchase.  Further, the mark’s own features were not sufficient to make it an unusual design on the market for the products; it did not depart significantly from sector norms and therefore did not have distinctive character. For shape mark owners, the balance between the requirement for distinctive character (because the shape differs from the norm) and the shape giving substantial value to the goods (which is another ground for refusal) can be a very fine one.

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