News Item

Registration of wine bottle surfaces rejected

1 July 2010

In the recent case of Freixenet SA v OHIM (Cases T-109/08 and T-110/08), the General Court has upheld OHIM’s decision to refuse the registration of the surfaces of two wine bottles as trade marks in Class 33.

Freixenet, a major producer of sparkling wines, sought Community wide protection for the surfaces of a black matt bottle and of a clear bottle which, when filled, took on a frosted matt golden appearance. OHIM rejected the applications in 2007 and the General Court, on appeal, confirmed the ruling.

The Court reiterated that non-distinctive marks were not registrable. They agreed with OHIM’s previous ruling that the appearance of a bottle alone did not indicate the origin. Consumers would not be able to identify the origin of the goods from the shape nor the surface of a bottle without the presence of a label. OHIM had expressly pointed out that consumers look at the label to identify the manufacturer of a bottle of wine. Freixenet’s bottles (and indeed all other bottles of wine on the market) were never sold without labels. The Court agreed with OHIM that the shape of the bottle added to the general aesthetic effect but did little to inform consumers of the origin of the products. It was also noted that the colour of a bottle would be very difficult to protect by registration, as a bottle’s colour would almost always be affected by the colour of the liquid inside it.

Although the outcome of this case is not surprising, it is a helpful reminder that marks seeking to protect the appearance of packaging of products without any additional graphic or textual element are harder to protect, as they must be sufficiently distinctive from other similar products on the market so as to indicate the origin of the goods.

For more information, contact your usual Marks & Clerk attorney or solicitor, or Alison Chin at achin@marks-clerk.com.