Bacardi & Company Limited have successfully appealed the EUIPO’s decision to refuse to register it’s EU trade mark following an application made in December 2017 for goods in Class 33 of the Nice Classification (alcoholic beverages except beers), on the basis that the original examiner failed to consider each component of the figurative mark collectively.
The application was to register a graphic mark as an EU trade mark. The EU Trademark is the Bacardi bottle itself: the details of the bottle include the green tint to the glass of the bottle, the shape of the bottle and a red circular badge representing a family emblem.
Under Article 7(1)(b) of the EU Trade Mark Regulation a trade mark will not be registered if it is devoid of any distinctive character.
The examiner firstly argued that a consumer would not automatically distinguish the origin of goods solely off the bottle. Even though the application was for a figurative mark, in reality it related to the representation of the product as a whole – therefore the relevant case law was law on the registration of 3D marks.
The examiner for the EUIPO proceeded to refuse the registration stating that the relevant parts of the figurative sign did not depart from industry standards to a significant enough degree, and as such did not sufficiently meet the criteria for an EU Trademark. The examiner commented that signs and emblems are frequently used as ornate badges on alcoholic beverages and therefore the figurative sign in question lacked distinctiveness.
On 21 December 2018 Bacardi appealed the decision and argued that the examiner had erred in its finding of lack of distinctiveness.
Bacardi argued that in previous cases the EUIPO had granted the registration of a number of 3D designs with similar elements to their application including signs without accompanying text.
It was also contended there had been an error in executing equal treatment and the sound administration of justice when considering that consumers look for specific detail when purchasing alcoholic beverages in order to identify them from competitor beverages.
Bacardi argued that although the shape of the bottle may not be distinctive when considered by itself, it needed to be considered with the elements of the light green colouring of the glass, the white label and the vivid red wax seal. This approach, Bacardi argued, would meet the threshold needed for registration as an EU Trademark.
On appeal to the EUIPO Fourth Board of appeal, these arguments were considered, essentially whether the combined elements would make the bottle distinctive (R01737/2018-4). Bacardi were not stating that the shape of their bottle was distinctive, but rather the figurative mark combined all the elements that made it distinctive (7(1)(b) EUTMR).
It noted that under s.3(1) Trade Marks Act 1994 (TMA), a mark cannot be registered if it is devoid of distinctive character. Focusing on the principle that a trade mark is to allow a consumer to identify the origins of a product and identify it against other similar products the board held that the average consumer would be able to identify the origins of the product when considering all the elements of the Bacardi bottle together.
The Board concluded that the elements on the Bacardi bottle in their entirety was adequately distinctive. And that the elements were more than the sum of its individual elements and as such, not subject to the refusal contained in Article 7(1)(b) EUTMR.