In Case T-411/14, the General Court confirmed that the CTM application below should be rejected for the following goods
Class 6: ‘Goods of common metal not included in other classes; metallic bottles’;
Class 21: ‘Household or kitchen utensils and containers; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes; glass and plastic bottles’;
Class 32: ‘Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’.
Both the Examiner and the Boards of appeal found that it was devoid of any distinctive character as regards the goods concerned.
The sum of the features displayed by the container at issue do not render the CTM application distinctive in so far as they are common to the shapes of the goods in Classes 6 and 21 and to the packaging of the contested goods in Class 32. Thus the shape at issue does not differ substantially from the basic shapes of the goods in question and their packaging and fails to meet the requirement as devoid of distinctive character within the meaning of Article 7(1)(b) CTMR.
The Coca-Cola Company tried to claim that the mark had acquired a distinctive character through use. Items of evidence submitted by the applicant during the administrative proceedings before OHIM included:
– a history of how the mark applied for has been used, providing the background and the foundations upon which that mark has been used throughout the EU;
– data based on surveys and the surveys themselves, conducted in 10 EU Member States, to prove that the majority of interviewees associate the mark applied for with the applicant and its Coca-Cola beverages;
– items of evidence, such as the code of conduct of the market research company, to prove that the abovementioned data were generated from well-conducted and independent surveys of approximately 5000 people representative of the relevant public in 10 Member States;
– sales figures accompanied by a table showing the distribution of sales among EU Member States and a sworn statement from the marketing counsel of Coca-Cola (Europe) to prove that the applicant has sold a large number of contour bottles with and without fluting in the European Union between 2009 and 2011;
– tables showing the amounts invested in advertising and communication between 2009 and 2011 to prove that the applicant’s Coca-Cola, Coca-Cola Light and Coca-Cola Zero beverages have been marketed throughout the European Union; and
– items of evidence in the form of photos, articles and website extracts to prove that the mark applied for has been used in business communications, website publications, pop art, third party publications and other media.
However, the BoA expressed serious doubts as to the reliability of the surveys submitted by the applicant — particularly with regard to their source — on the ground that they had not been carried out by the recognised market research company, but rather by a former director of that company who had become an independent market research consultant. Moreover the surveys contained leading questions and that the percentage figures did not add up correctly (according to the Board, the total exceeded 100% on adding certain percentages). In addition, the surveys had been carried out in less than half the Member States of the EU and were conducted after the date of submission of the application for registration of the mark.
As regards the turnover and sale volume figures provided by Coca-Cola, even taking into account the witness statement made by the marketing counsel of the applicant’s subsidiary in France, they related to the entire activity of the applicant and not to the mark applied for.
As regards advertising material, almost all the material submitted did not refer to the mark applied for, but rather to the applicant’s other bottles or cans, and particularly to its famous contour bottle with fluting.
Moreover, the mark applied for had acquired a distinctive character through use as part of another mark. So the present case could be distinguished from the cases relied on by the applicant in that respect. The BoA added that the perception of the relevant consumer was not necessarily the same in the case of shapes as it is in the case of verbal components.
Taking into consideration the characteristics of the sign applied for, the nature of the contested goods, and the marketing strategy shown in the evidence, it was not irrelevant that in the present case the contour bottle without fluting may be sold with a label.
In that regard, the Board of Appeal acknowledged that a brand-focused advertising strategy could not be a barrier to acquiring distinctiveness, but stated that the items of evidence adduced showed how the goods at issue had been marketed to the relevant public under the CTM application. In the Board of Appeal’s view, those considerations regarding the marketing strategy could not be disregarded when assessing the perception of the mark applied for by the relevant public.
Whilst acknowledging that Coca- Cola had made a considerable investment in advertising and that the sales figures provided were very high, the BoA found that the evidence, as a whole, remained insufficient and unconvincing as regards the relevant public’s actual perception of the CTM application. As regards the contested goods other than non-alcoholic beverages, the evidence of distinctive character acquired through use was almost non-existent. Further, no evidence had been submitted concerning the purchase of ‘glass and plastic bottles’ and ‘kitchen utensils’.Moreover, the documentation regarding the history of the applicant’s non-alcoholic beverages showed images of the contour bottle with fluting and, for the most part, appeared to involve images or text taken or written outside the EU (particularly in the United States) or in unknown locations, and that those documents could not therefore demonstrate the acquired distinctive character of the mark applied for in the EU.
Therefore the CTM application did not successfully pass the threshold for acquired distinctiveness according to Article 7(3) of the CTMR.
For 10 of the Best Coke Bottle (and Can) Designs see here