The Court of First Instance's decision in G. M. Piccoli Srl, v OHIM (Case T-8/08) was published today. For her first blog, this blogger is translating from rusty Italian as the decision is currently only available in Italian and French.

The decision relates to a Community trade mark application for a sign consisting of the three-dimensional shape of a shell. Piccoli filed the application with OHIM on 1 July 2005. Initially, the application was in respect of products falling in Class 30 (coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry, confectionery, ices, honey, molasses syrup, yeast, dust to rise , salt, mustard, vinegar, sauces (condiments), spices, ice).

Factual background: In February 2007, the Examiner partially rejected the application for "preparations made from cereals, pastry, confectionery and ice cream", on the basis that the applied-for sign did not differ sufficiently from other signs that already existed on the market for the same/similar goods and hence did not possess distinctive character. In addition, the Examiner found that the mark had not acquired distinctiveness through use, because the evidence supplied concerned only Italy. When the appeal from that decision was itself dismissed, Piccoli appealed to the Court of First Instance.

Legal background: According to settled case law, the distinctiveness of a mark must be assessed by reference to the the products or services for which registration is sought and the average consumer of those goods or services (who is well-informed, reasonably observant and circumspect).

Findings:

• The more the applied-for sign approaches the likely form of the product in question, the more likely that it is devoid of any distinctive character. In this case, the form was simply a variant of the usual form of other confectionery bakery products commercially available (i.e. shell-like). Accordingly, the Court concluded that the sign was devoid of distinctive character.
• As to distinctiveness acquired through use, evidence of distinctive character was adduced only in respect of Italy.
• The Court indicated that for non-word trade marks, it must be assumed that the assessment of distinctiveness is the same throughout the Community, unless there is specific evidence to the contrary [the judgments of the Court 29 April 2004, Case T-399/02, Eurocermex / OHIM (Shape of a bottle of beer), ECR. II-1391, paragraph 47, 10 November 2004, Case T-402/02 Storck v OHIM (Shape of a farfalletta), ECR. II-3849, paragraph 86].
• In the absence of specific evidence to the contrary, the impression made by the sign on the average consumer is the same throughout the Community and, therefore, the applied-for sign was devoid of any distinctive character throughout the Community. As Piccoli focused on only one of the 25 Member States, the evidence was not sufficient to prove that the mark had acquired a distinctive character in the remaining Member States of the Community.