The European Court of Justice (ECJ) has rejected an application by German company SiSi-Werke (S-W) to register a three-dimensional shape as a trade-mark. S-W tried to register eight marks for the shape of stand-up pouches for packaging drinks, including the flexible pouch for Capri-Sun, a product which had been distributed in Europe for 20 years. The registrations were refused by the European Office for Harmonisation in the Internal Market (Trade Marks and Designs).
The ECJ upheld a lower court ruling that the claimed shape was not distinctive, since the stand-up pouches were already commonly used in the beverage industry and the shape was “not unusual enough for the average consumer to distinguish it as an indication of the specific commercial origin of products in this category”.
In its judgment (Deutsche SiSi-Werke v OHIM), the ECJ wrote that “only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character.”
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For the full text of the judgment, visit:
Also on the topic of shape, the English Court of Appeal has upheld a High Court decision that the registration of Philips’ 452 mark, a two-dimensional picture of the shape of the top portion of a Philips three-headed rotary electric shaver, is invalid.
The Court of Appeal confirmed High Court Judge Justice Rimer’s decision that the clover-leaf feature of the 452 mark was not an essential feature of the shape but instead contributed to the product’s overall functionality, that is, of “giving a smooth, effective and comfortable shave”.
The Court of Appeal disagreed with the Justice Rimer’s finding that the mark was not distinctive and conveyed a clear description of the goods; however, having found the trade-mark to be invalid, it made no formal ruling on distinctiveness.
Actions brought simultaneously in Sweden, France, Germany, Spain and Italy have also been decided against Philips – the judgments, according to the Court of Appeal, “speak with one voice … Philips’ shape marks for their three-headed rotary electric shaver are invalid by reason of their functionality.”
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For the full text of the judgment in Koninklijke Philips Electronics NV v Remington Consumer Products Limited v Rayovac Electronics Limited  EWCA 16, see:
Summary by: Clare McCurley