Bongrain SA, Re Trade Mark Application

This appeal is from the judgment of Pumfrey J [2003] EWHC 531(Ch). He upheld the decision of Mr A.J. Pike, the Hearing Officer acting for the Registrar of Trade Marks who refused application number 2,134,604 by Bongrain SA. In short, trade mark (and hence perpetual) protection is sought for the shape of a cheese as shown in the pictures accompanying the application.

These are the pictures:

The specification of goods for which registration was originally sought was “Cheese; dairy products; all included in Class 29.” The applicants have offered to limit this to “cheese.”

The application form contains the following words:

“An application for a series of two three-dimensional marks. The first mark in the series consists of a three-dimensional shape as shown in the representation on the left hand side of the sheet. The second mark in the series consists of a three-dimensional shape with a “ridged effect” on the surface as shown in the representation on the right. The wording on this sheet does not form part of the marks.”

Protection is sought whatever the colour of the cheese or its rind or wrapping (if it has wrapping) and irrespective of any label which in real life would almost certainly be attached to the cheese at least at the point of sale.

Aldous LJ granted permission to appeal as long ago as 1 May 2003. He did so on the basis that the appeal raised an important point of law. However, before the matter came before this court it was apparent that guidance on the question of the registration of three-dimensional marks was likely to be given in a number of cases before the European Court of Justice (“ECJ”). So this appeal was stood out until they were decided. That was an obviously better course than referring to the ECJ questions which were likely to be decided anyway.

I set out here the cases to which I shall refer later in this judgment, along with a subject-matter summary. I divide them into two groups, allowed and disallowed. In the case of decisions on a reference I allocate the case to one of the two groups according to the effect of the decision because, of course, the ECJ does not actually decide the outcome itself. Unless otherwise stated the cases are decisions of the ECJ rather than the Court of First Instance (“CFI”).

In accordance with my usual practice I do not use the numbering of those provisions in the UK Trade Marks Act which enact the provisions of Directive 89/104/EEC. The language is the same and use of our local numbering merely makes our judgments less intelligible in the wider European context. Art. 2 says:

“A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.”

Art.3 so far as is material says:

“1.

The following shall not be registered or if registered shall be liable to be declared invalid –

(a)

signs which cannot constitute a trade mark;

(b)

trade marks which are devoid of any distinctive character;

(c)

trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;

(d)

trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;

(e)

signs which consist exclusively of:

-

the shape which results from the nature of the goods themselves, or

-

the shape of goods which is necessary to obtain a technical result, or

-

the shape which gives substantial value to the goods;

The following matters were common ground:

The approach on appeal was also common ground. It was accepted that Pumfrey J applied the right test on appeal from the Registrar, namely that it was a re-hearing not a review, but that the Court should be slow to reverse the decision of the experienced Registrar on a question which consists largely of a value judgment, such as “distinctive character.”

It was also accepted that the Court of Appeal will not interfere with an assessment of distinctiveness by the lower court unless there is a clear error of principle. Distinctiveness, like obviousness in the case of patents, is subject to the Biogen appeal principle [1997] RPC 1 at p.45. For obvious reasons there will be an even greater reluctance to interfere where there are concurrent findings below.

Mr Malynicz, who argued the case for the appellants most attractively, yet concisely, placed primary emphasis on this point. At the heart of his submission was that the shape, especially if confined to cheese, was strikingly unusual and that was enough give it a “distinctive character” entitling it to registration without more. Suppose you had bought or seen (e.g. on a restaurant cheeseboard) the cheese concerned and later wanted to buy some more in a shop. You would recognise the shape as being unique for the cheese you want and would be able to rely on that. The unique and striking shape would be a sign conveying the message – here is the cheese you had before.

Mr Malynicz supported his “striking-and-unusual-is-enough” submission by reference to a single sentence in paragraph 39 of Henkel (detergent tablet). This I set out again:

“Only a trade 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…”

He submitted that there was no further requirement than that, that the Court was there laying down that a significant departure from the norm was enough to confer a distinctive character. He sought to evade the later decision in Mag Instrument on the basis that the torch shape there was not a significant enough departure from the norm.

As an example of what he said was now the wrong approach he pointed to what Laddie J said in Yakult’s Application[2001] R.P.C. 39:

“[10] ....For the purpose of this appeal, I am prepared to accept that the bottle shape which is the subject of these applications is both new and visually distinctive, meaning that it would be recognised as different to other bottles on the market. That does not mean that it is inherently distinctive in a trade mark sense.

[11] Mr James came to the conclusion that the average consumer was likely to conclude that the design in the applications was nothing more than a bottle of pretty ordinary shape. I agree. Like Mr James, I can see nothing which would convey to someone who was not a trade mark specialist that this bottle was intended to be an indication of origin or that it performed that function. Even were it to be recognised as of different shape to other bottles on the market, there is nothing inherent in it which proclaims it as having trade mark significance.”

The approach is wrong, he submitted, because there is no extra requirement that a shape mark should proclaim itself as a trade mark. If the shape is highly unusual, it must be taken as doing so.

He further submitted that the CFI decisions in Néstle Waters and Henkel v OHIM (diamond shaped bottle) showed the right approach. In each case the highly unusual shape of the bottle was enough to pass the Art.3(1)(b) test without any proof of distinctiveness in fact. He showed us paragraph 40 of the latter case where the CFI were almost ecstatic about the unusual nature of the shape. It went on to say:

“That combination thus confers on the bottle in question a particular and unusual appearance which is likely to attract the attention of the relevant public and enable that public, once familiar with the shape of the packing of the goods in question, to distinguish the goods covered by the registration application from those having a different commercial origin”

That, he submitted, applied here.

Mr Malynicz also sought to head off a number of subsidiary arguments; arguments based on public policy considerations. In a number of cases, the ECJ has identified the public interest served by some of the Article 3 objections as the need to preserve certain signs for other traders to use in the same or similar fields so as to maintain freedom of action and healthy competition – what Professor Bently calls the “protective function” of the objections: see Intellectual Property Law, pp. 804-805 2nd ed. 2004.

He submitted that the public interest in the availability of alternatives did not apply here. Such an interest was identified by the Court in the colour mark case, Libertel where the court at para. 55 identified a public interest in:

“not unduly restricting the availability of colours for the other operators who offer for sale goods or services of the same type as those in respect of which registration is sought.”

He submitted that such an interest was essentially limited to colour marks – to “colour depletion” and was really part of an Art.3(1)(c) objection.

Similarly he submitted that even if the public considered the shape as indicating convenient notional lines for cutting wedges of the cheese, that made no difference. Such a perception was more in the nature of an Art.3(1)(c) objection, and as such irrelevant to Art.3(1)(b).

So far as the Judge is concerned, Mr Malynicz submitted he made a preliminary error when he said:

“14.

No doubt the sale of cheese or other dairy goods having the shapes shown in the trade marks in suit to the public is within the scope of the notional fair use to which the marks might be put.”

The error is said to be the fact that he took “other dairy goods” into account. This is because the applicants had, by the time the case reached him, offered to limit the goods to just “cheese.” Mr Malynicz said this was an error of principle – that for instance, the shapes in which butter is sold is irrelevant. I do not think this is so. Butter and cheese are closely linked in the public mind. They may be in different refrigerators in some supermarkets, but common experience of other kinds of shop, notably delicatessens, shows this is not necessarily so. I do not think the limitation of the specification makes any difference, and certainly not one of principle.

More fundamentally, Mr Malynicz submitted that the Registrar was in error when he said:

“12.

The sign applied for is the shape of a cheese and in order to be acceptable for prima facie registration as a trade mark it must convey trade mark significance to the relevant public. It is not sufficient for it to consist of a shape which is of memorable appearance; that appearance by itself must convey trade mark significance …

13.

Cheese and other dairy products (such as butter) are available in a variety of shapes, sometimes for historical reasons or for aesthetic reasons. There is nothing strikingly unusual about the shape in question which suggests that it is a source identifier”.

And, he submitted, Pumfrey J made the same error when he said:

“17.

…It is generally difficult to show that the shape of goods themselves are apt to signify origin. The task of the Registrar is to consider the ability of the unused mark to indicate origin, having regard to the nature of the trade and the relevant public. She considers the mark before the proprietor has educated the public as to its function (see, on this, the very clear judgment of Laddie J in Yakult). Where ordinary household goods are involved, the Registrar’s hearing officers are entitled to rely upon their own experience and perceptions”.

And:

“18.

The marks in suit are neither striking nor memorable. I consider that before they could be accepted for registration the proprietor would have to have educated the public as to their significance as an indication of the origin of dairy goods.”

I would reject these submissions. I begin with the public interest submissions, though I do not regard them as at the heart of the case. Firstly I do not accept that the “depletion” public interest is confined to colour marks. It just cannot be that there is a special rule for this sub-category of mark. The legal tests are the same for all types of mark. They are those in the Directive which draws no distinction between different types of mark. So much is made plain by Henkel (detergent tablet). The point is that the public perception as to different types of mark may differ. The reason “colour depletion” may matter is that where the relevant trade is carried on by a large number of traders, a particular colour as such, is less likely to denote a particular trader than where the field of traders for the public to distinguish between is more limited, as, for instance, mobile phone operators (as was the case in Libertel). In other words colour depletion is not an independent ground of objection – it comes in as part of the considerations under Art.3(1)(b) and (c) and possibly other Art.3 objections.

So also does the shape-to-cut point. This indeed may be relevant to an Art.3(1)(c) objection – it may indicate “intended purpose.” But that does not mean that a perception of shape having a function is not also relevant to Art.3(1)(b). The various grounds of objection, although independent, may overlap. This the Court made clear in “Postkantoor”.

“… it is clear from Article 3(1) of the Directive that each of the grounds for refusal listed in that provision is independent of the others and calls for a separate examination …. That is true in particular of the grounds for refusal listed in paragraphs (b), (c) and (d) of Article 3(1), although there is a clear overlap between the scope of the respective provisions (see to that effect Case C-517/99 Merz & Krell [2001] ECR I-6959, paragraphs 35 and 36.”

Quite apart from the point having been clearly so decided, if one stops and thinks about a couple of obvious examples, it must be so. A mark which serves to designate kind (and so is excluded by Art.3(1)(c)) will, for the same reason, be devoid of distinctive character: Art.3(1)(b). So also for a mark which consists exclusively of a sign which has become customary in the current language: Art. 3(1)(c).

With that I can turn to Mr Malynicz’s main point – that a very fancy shape is necessarily enough to confer an inherent distinctive character. I would reject it. As a matter of principle I do not accept that just because a shape is unusual for the kind of goods concerned, the public will automatically take it as denoting trade origin, as being the badge of the maker. At the heart of trade mark law is the function of a trade mark – expressed in Recital 10 of the Directive as an indication of origin. The perception of the public – of the average consumer is what matters. Mr Daniel Alexander QC, for the Registrar, helpfully pointed out that the kinds of sign which may be registered fall into a kind of spectrum as regards public perception. This starts with the most distinctive forms such as invented words and fancy devices. In the middle are things such as semidescriptive words and devices. Towards the end are shapes of containers. The end would be the very shape of the goods. Signs at the beginning of the spectrum are of their very nature likely to be taken as put on the goods to tell you who made them. Even containers, such as the fancy Henkel container, may be perceived as chosen especially by the maker of the contents (e.g. shampoo) to say “look – here is the product of me, the maker of the contents”. But, at the very end of the spectrum, the shape of goods as such is unlikely to convey such a message. The public is not used to mere shapes conveying trade mark significance, as the Court pointed out in Henkel (detergent tablets). The same point was made about slogans in Das Prinzip der Bequemlichkeit, para. 35:

“the authorities may take account of the fact that average consumers are not in the habit of making assumptions about the origin of products on the basis of such slogans.”

As regards the sentence from Henkel (detergent tablets) quoted above at para. 13, I do not read the Court as saying – almost as an incidental matter – that a fancy shape is ipso facto enough for registration. Mr Malynicz suggests we read “thereby” as “therefore”. I think the Court is saying no more than that fancy shapes – those which depart significantly from the norm – may fulfil the essential function, not that they must. The approach in Mag Instrument is particularly instructive. What matters is:

“the presumed expectations of an average consumer” (para.7)`

In that case the fact that the shapes of the torches had in fact become well-known after the date of application was not enough to prove they had inherent distinctiveness within the meaning of Art.7(1)(b) of the Community Trade Mark Regulation (equivalent to Art.3(1)(b) of the Directive) (judgment para. 64).

So I think Mr Malynicz’s principal contention is wrong. Even if the shape of the goods themselves is indeed fancy, that is not enough to entitle a would-be trader in them to registration as a trade mark. (I say would-be because one is here working on the hypothesis of an unused mark.) Although a trade mark may also be a design, there are real differences between creating a fancy shape to sell as such and a fancy shape which truly in itself will denote trade origin if used. In so holding I am not saying (and indeed Mr Alexander did not contend otherwise) that a shape of goods (including that of a cheese) cannot become a trade mark by acceptance as such by the public. Mere use may not be enough, but if it can be shown that, following such use, the average consumer has come to say: “by this shape I know I can rely upon getting goods from the same maker as before”, then the design of goods will also have become a trade mark. Registration pursuant to Art.3(3) would then be permissible because the shape would have acquired a distinctive character in the trade mark sense.

As far as cheese is concerned Mr Malynicz accepts that no other cheese shape is, or is said to be, a trade mark. So an average consumer, surveying the myriad of cheeses on display in a good supermarket or on a restaurant cheese platter, would, I think, be astonished to be told that one of the shapes was a trade mark. Consumers do not expect to eat trade marks or part of them. A consumer may indeed, when looking for a cheese he has had before, recognise the shape. He might even say: “this looks like the one I had before. I suppose it could be what I want.” But, without established use and recognition it cannot be said that he would, without more, regard shape alone as giving him a guarantee of origin – the essence of what a trade mark is. Even within established use, the supposition may be somewhat unrealistic if the cheese he saw was of a different colour or bore a very different label or wrapping.

Far from being wrong in principle, both the Registrar and the Judge applied the right legal test as regards the inherent nature of the mark.

The applicants also sought to support the application on the grounds of Art.3.3 – that the shape was distinctive in fact. The Registry gave them an overgenerous series of opportunities to do so. The applicants successively put forward one scrap of evidence after another, submitting each time that it was enough, and, when told it was not, asking for more time to improve matters. The Registry is entitled to be firmer with this sort of thing; it should have regard to the public interest in disposing of applications one way or another. One must never forget that a pending application for an intellectual property right hangs over the public at large. A pending application, even if ultimately refused, may act as a real commercial deterrent while it “pends”. It is not fair on the public to allow the applicant to string things out.

The result in this case was about 4½ years between the date of application and the Registry decision refusing registration. The totality of the evidence, such as it was, could have been put together in a few weeks. There was no evidence of use of the marks actually applied for. Reliance was placed on evidence of use of a somewhat similar cheese shape consisting of 8 rather than 6 segments with a hole in the middle. It bears a label with a hole in it on the top. This has the repeated trade mark “Saint Albray”, each repetition being positioned over a segment – clearly inviting a cutting of the cheese so that each segment still carries the mark. Evidence of the period and scale of use was provided – it was not significant considering the cheese market as a whole.

There was an attempt to obtain some evidence from two trade witnesses: a picture of the mark applied for was sent to them. The recipients were asked “can you guess the producer of the cheese?” I am afraid this was entirely hopeless. Trade mark registrations are not granted for correct answers to guesses. What one is looking for is a guarantee of origin.

There was also some trade evidence from the Chairman of the Speciality Cheese Section of the Provision Trade Federation (food importers). He gave the opinion that, if the mark in question had been in use in 1997, it would have been distinctive and asserted that it would have been seen as a badge of origin. He gave no reason why, other than to say it “was not common for cheeses to be sold in such fanciful shapes”. Again that will obviously not do. It is just an assertion of the answer. The evidence is miles from proving that the mark, if used, would be relied upon as a guarantee of origin.

Accordingly, even if this were not a second appeal in which it is necessary to show that an error of principle was made below, I would have dismissed this evidence as valueless. The Registrar and the Judge were right to deal with it as they did. In fairness Mr Malynicz recognised that the evidence was inadequate – doubtless that is why he focused on Art.3(1)(b).

I would dismiss the appeal.

I agree.

I also agree.