CHAPTER 13 - § 13.02

• Jurisdiction: United States

§ 13.02 TRADE DRESS RIGHTS IN EUROPE

At first blush, registrations for trade dress might seem somewhat easier to acquire in Europe than in the United States. For one, the concept of inherent distinctiveness still exists in Europe for product configuration trade dress. As we examined in Chapter 5, the U.S. Supreme Court decision in Wal-Mart held that product configuration trade dress can never be inherently distinctive.¹ This general concept allows applicants to obtain registrations for product configuration trade dress in Europe without having to go through the time, effort and expense associated with proving acquired distinctiveness.

The focus of the examination process in most European countries is on the ability of the trade dress to distinguish generally. While there are some distinctions drawn between inherent and acquired distinctiveness in Europe, so long as the trade dress is shown to be "capable of distinguishing the goods or services" of one company from another, it will be registered. As compared to the U.S., there are relatively few cases in Europe which draw sharp lines between product configuration and product packaging trade dress (like Wal-Mart). Functionality (both utilitarian and aesthetic) also does not seem to be mentioned as frequently in European examination proceedings as in the United States. Functionality is often raised as a defense in European litigation, but not nearly as frequently as in the United States.

The easiest way to protect trade dress throughout Europe is through a Community Trade Mark (CTM) application.² CTM applications may be filed with The Office of Harmonization in the Internal Market (OHIM), and provide coverage in all European Union (EU) member nations, including Austria, Benelux (Belgium, the Netherlands and Luxembourg), Bulgaria, Cyprus, Croatia, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom.

Under this system, a CTM application may be filed on:

. . . any signs 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. [emphasis added].

Thus, production configuration, product packaging, and product color trade dress are all clearly available for registration in the EU; the key is the capability to distinguish. Whereas a U.S. Examiner might focus this inquiry on the concept of acquired distinctiveness through the examination of sales and advertising numbers, EU Examiners have instead focused primarily on the ability of the trade dress itself to distinguish (i.e., inherent distinctiveness). EU Examiners will look to acquired distinctiveness, but only after they have determined that the trade dress cannot be inherently distinctive. Until recently, EU Examiners took a fairly strict view of inherent distinctiveness, and would only register trade dress where it substantially deviated from other shapes and color schemes in the same industry. If the trade dress is sufficiently unique-looking, EU Examiners will typically allow the mark to register. EU Examiners rarely make inquiries into the specific utilitarian (or aesthetic) functionality of the trade dress in a CTM application, which is a departure from U.S. practice.

One major advantage that the CTM application has over the U.S. application is the ability to submit multiple views of the trade dress, even using photographs of the product itself. U.S. applicants are limited to a single view of the trade dress, and photographs are not typically permissible. The ability to submit multiple views gives the EU Examiners a more complete picture of the trade dress, and avoids the need for manufactured drawings of the trade dress, which often don't depict the product as it appears in the marketplace.

One case that has received a good deal of attention is Freixenet v OHIM & CJEU (hereinafter "Freixenet"). There, Freixenet had filed two CTM applications on bottles for sparkling wine, one a 'frosted white' bottle, and the other a 'frosted black matte' bottle (shown below). Along with the applications Freixenet submitted a declaration stating that they were not looking to protect the bottle shape per se, but rather the specific appearance of the bottle's surface. Both the Fourth Board of Appeal of OHIM and the European Union's General Court upheld the rejection of the applications, finding that the bottles did not deviate substantially from industry standards.

Freixenet appealed to The Court of Justice of the European Union (CJEU), arguing that the lower court decisions had incorrectly decided that the appearance of a bottle could not fulfill the function of trademark without a label. The CJEU agreed, finding that the lower courts had failed to consider the overall appearance of the bottles.³ On remand, Freixenet was able to obtain CTM registrations for both bottles.

On the other side of things, there is Chocoladefabriken Lindt & Sprungli AG v. OHIM (hereinafter "Lindt"), where Lindt sought to register the shape and packaging of a chocolate bunny.⁴ The bunny was wrapped in gold foil with a red ribbon including a bell located around its neck (see below). Here again, the Fourth Board of Appeal and the General Court both rejected the CTM application, finding the trade dress devoid of distinctive character.⁵ Lindt appealed to the CJEU. This time, however, the CJEU affirmed the lower courts, holding that the shape in question did not depart from the norms of the relevant sector, and was not strikingly different from other similar shapes for chocolate bunnies.⁶ Interestingly, at the time of the...