In Case  T-474/12 Giorgis v OHMI, the applicant, Mr Giorgio Giorgis, was granted registration of the 3D CTM below for Class 30 goods ‘Ice, flavoured ices, mixed sorbets, ice sorbets, ice creams, ice-cream drinks, ice-cream goods, ice-cream desserts, semi-frozen desserts, desserts, frozen yoghurt, pastry’.

Comigel brought an action for invalidity which was granted by the Cancellation Division of OHIM and confirmed by the BoA. They found the contested mark to be invalid for all the goods on the basis of Article 7(1)(b) CTMR, read in conjunction with Article 52(1)(a) of that regulation. In addition, the applicant’s argument that the contested mark had acquired distinctive character through use in accordance with Article 7(3) of CTMR was rejected.

In its brief of appeal,  Giorgis alleged before the GC that the BoA assessed the relevant public’s level of attention incorrectly. He argues that the average consumer of ice creams displays a high level of attention, given that his choice is made on the basis of various factors, such as the flavour of the ice cream, the way in which it is consumed, the various kinds of ice creams and the possible presence of certain ingredients. However the GC upheld the findings that the relevant public is the average consumer: “ice creams are inexpensive, everyday consumer goods, generally sold in supermarkets, the purchase of which is not preceded by a lengthy period of reflection, and in respect of which there are no grounds for taking the view that the consumer will display a high level of attention at the time of purchase. Furthermore, the fact that the consumer chooses goods on the basis of his tastes is obvious in the case of mass-consumption food products.” (para.17).

The contested mark consists of the 3D shape of the packaging of the goods in question, the relevant norm or customs are those which apply in the sector of the packaging of goods of the same type and which are intended for the same consumers as the goods in question.

OHIM examined separately the two elements which compose the contested mark that is the glass containers and the cardboard casing.

First, in its assessment of the distinctive character of the glass containers, it stated that those types of container are used in the market for selling desserts, ice creams, sorbets and yoghurts and that they are used to convey to consumers the message that the goods in question are of high quality and handmade, which the applicant does not dispute.

Second, in assessing the distinctive character of the second element consisting of  the cardboard casing with openings at the top and on the sides, the BoA found that those characteristics were present in most of the cardboard casings provided as evidence by Comigel. It took the view that the shapes of cardboard casings with openings at the top and on the sides were common in the sector of the goods in question, in particular in order to show the product or any relevant information concerning the product. Taking into account the norm and customs of the sector of the goods in question (desserts, ice creams, sorbets and yoghurts), the shape of the cardboard casing of the contested mark was ornamental only, did not depart significantly from the customs of the sector and did not have distinctive character.

The GC confirmed that the shape of the containers in the contested mark did not depart substantially from that of the cups present on the market for the marketing of desserts, ice creams,etc, which was corroborated by the evidence provided by Comigel showing containers that differed only slightly from those of the contested mark.

As regards  Giorgis’ claim that the BoA assessed the distinctive character of the contested mark too restrictively and with a stricter criteria than the one applicable by the case-law, the GC pointed out that the requirement of a ‘substantial difference’ is not the criterion according to which the BoA assessed the distinctive character of the contested mark. In the contested decision, it is only after concluding that the contested mark did not have distinctive character that the Board of Appeal, citing the judgment in Case T‑15/05 De Waele v OHIM (Shape of a sausage) [2006 used the expression ‘differ substantially’ in order to respond to the applicant’s argument concerning the novelty and originality of the shape of the contested mark.

Finally, regarding the alleged acquired distinctive character through use in accordance with Article 7(3) of CTMR,  the evidence, taken as a whole, related to only 8 Member States and therefore did not demonstrate that distinctive character had been acquired in a substantial part of the EU. Secondly, the applicant had not proved that the contested mark had been perceived as a designation of the origin of the goods, on account of the fact that the shape of the packaging had always been used in conjunction with the sign LA GELATERIA DI PIAZZA NAVONA printed on that packaging.The applicant failed to specifically substantiate the assertion that the shape of the packaging of the goods was particularly retained by the relevant consumers in their memory as an indication of its commercial origin, and that the particular appearance of the 3D shape of the packaging of the goods in question constituting the contested mark made it possible to differentiate it from those of other manufacturers.

The GC dismissed the appeal.