EUROPEAN UNION: Carefully Defining What Constitutes ‘Usual Shapes’ for 3D Marks

[Original article published by INTA on March 17, 2021]

The decision dated December 16, 2020 (Case T-118/20) reversed the decision of the Board of Appeal of the European Union Intellectual Property Office (EUIPO). In doing so, it refused registration to EU Trade Mark (EUTM) application No. 017959421 applied for by Voco GmbH (the applicant) for dental preparations and articles in Class 5, and packaging materials and blister packs for packaging in Class 16:

The Board of Appeal had found that the sign consisted in an elongated irregular hexagon resembling a rectangle and did not differ significantly from the usual packaging existing on the market for dental professionals. Consequently, the Board of Appeal refused the trademark application on the grounds of lack of distinctive character pursuant to Article 7(1)(b) of Regulation (EU) 2017/1001 (EUTMR).

The applicant appealed the decision before the GC. It argued that the examples cited by the EUIPO examiner consisted of trays having high edges or sides which showed a slightly rounded rectangular outline and that these differed from the hexagonal configuration of the applied-for sign.

The GC found that the Board of Appeal had not proven that rectangular flat packaging was usual in the dental market and such a conclusion could not be drawn from the examples cited by the EUIPO examiner. The GC refuted the EUIPO’s arguments that the examples cited by the examiner were relevant in view of the rectangular shape of the packaging. The court did not accept the specimens as they showed a substantially different shape to the applied-for mark.

The GC concluded that the examples relied on by the Board of Appeal were neither relevant nor sufficient to demonstrate that flat packaging is usual in the dental market and annulled the decision of the Board of Appeal. The application will be reexamined by the EUIPO.

Ballester IP