Case Nos. R 62/2024-5 and R006/32024-5 of the EUIPO Board of Appeal issued in August 2024 concerned the ability of perfume bottles to function as an indication of commercial origin, and therefore their ability to function as trade marks.

Coscentra B.V., a manufacturer of perfumes, applied for the below 3D shape trade marks at the EUIPO in relation to ‘perfumes’ in Class 3.

Both applications received an Article 7(1)(b) objection on the basis that the shapes do not meet the minimum level of distinctiveness required for a sign to function as a trade mark and distinguish the products of one undertaking from those of another. The reasoning was: 

• the average consumer is not in the habit of relying solely on the shape or appearance of a product, or of its packaging, when identifying the commercial origin of a product

• the appearance of the sign does not differ significantly from the standards and customs of the concerned sector 

• cursory research indicated other similar themed perfume bottles on the market

• the perfume industry generally utilises the shape of perfume bottles to increase the attractive force of the product to the consumer 

Coscentra B.V. responded to the objection arguing:

• it owned earlier registered EUTMs, French TMs, and Community Designs for a similar bottle design, and therefore the new applications must be distinctive 

• a legal dispute with Jean-Paul Gaultier in relation to a perfume bottle of a similar shape held that the design in question is unique

• the remaining similar shapes for perfume bottles found by the Examiner were either infringing products, or low cost imitations 

The Examiner dismissed these arguments.

Coscentra B.V. appealed on the basis that: 

• the Examiner failed to consider the history of the applied for perfume bottles

• sales evidence and evidence of public demonstrated recognition of the bottles as being distinctive

The Board of Appeal did not perceive the history of the perfume bottles to be of relevance. Instead they focused on Examiner’s conclusion that the sign is typical for the market and cannot act as an indication of origin. They found this to be wrong, partly based on the minimal evidence provided by the examiner to establish the refusal on the basis of ‘norms of the sector’.

In particular, the Board of Appeal stated that: 

1. “it does not seem obvious that [the mark] has elements similar to those most likely to be taken over by a perfume bottle... [a] body as a perfume bottle in itself appears to deviate sufficiently from the standards or practices in the perfume sector.”
   
   
2. “the shape of the perfume bottle at issue, with … the use of horizontal discs of the same width which are aligned, has specific characteristics which make the bottle distinctive and unusual.”
   
   
3. “the mark applied for cannot be regarded as simple or banal.”
   
   
4. “the mark applied for… has both special and original characteristics and also enables the public to distinguish perfumes from those of third parties.” 

The Board of Appeal held that the signs do cross the threshold for distinctiveness. The Examiner’s decision in both cases was annulled and the EUTM applications allowed to proceed to registration. 

It is worth noting that the Board of Appeal placed a lot of weight on the nature of the market in which the product exists, considering that the appearance of perfume bottles has become an essential part of perfume products and operates as an identifier of origin.

Further the Board of Appeal also reiterated the correct assessment and considerations - that such a mark must depart significantly from the basic shapes commonly used in trade for the products claimed. 

Brand owners should ensure shapes they would like to register as a trade marks are eye catching, striking and outstanding in their relevant market.

If a claim to acquired distinctiveness is not available in the case of a 3D mark, background about the norms for shapes of products in the relevant sector in which the product exist will be of greatest assistance in trying to overcome a distinctiveness objection.