Recent case law from Poland and the EU shows that it is tough to gain protection for a 3D trademark in the form of the shape of a product. Maintaining the protection of such a mark may also be a problem.
Supreme Administrative Court judgment of 21 March 2017, Case II GSK2217/15
This problem was encountered by the Dutch company Unilever NV, which obtained protection for a trademark in the form of the shape of a green bottle with a red cap but 5 years later was served with an application to revoke the registration.
Domestos mark: bottle registered as R.134678
The application filed by the Rosiński company alleged that the mark had not actually been used for the goods covered by the mark, i.e. goods in classes 3 and 5, including disinfectants.
The applicant asserted that it held rights to registered industrial design Rp-2543, which presents a bottle with features essentially similar to those of the disputed trademark.
Rosiński industrial design registered as Rp-2543
Rosiński also claimed that it produces bottles for cleaning products similar to those presented by the Domestos mark. In its view, Unilever does not genuinely use the Domestos mark in the form in which it is registered, i.e. solely a stylised green bottle with a red cap, but only combined with additional elements, namely a label with the inscription Domestos, as below:
Rosiński argued that the trademark registration enabled Unilever to monopolise this bottle shape to the detriment of consumers and bottle manufacturers.
Patent Office decision
The Polish Patent Office agreed with the applicant’s arguments and issued a decision revoking the protective rights to the disputed Domestos mark for all goods. Unilever challenged this decision before the province administrative court. The court set aside the decision for formal defects (the chairman of the adjudicatory board had failed to sign the justification for the decision). Rosiński filed a cassation appeal with the Supreme Administrative Court, which was denied, and thus the case was re-examined by the Patent Office.
The Patent Office found that the rights to the Domestos mark in this 3D form had lapsed for all goods other than disinfectants. The office found that it was undisputed that Unilever had marketed such products in a stylised green bottle with a red cap and a label reading “Domestos.” The name “Domestos” and the label with that name were registered by Unilever as separate trademarks. Thus the main task of the Patent Office was to determine whether use of the Domestos mark in the form of the shape of the bottle combined with other trademarks belonging to Unilever met the requirements for genuine use of the disputed mark.
Consumer research submitted by Unilever proved crucial in the case. The office found that the Domestos mark was indeed used in commerce only together with other trademarks registered by Unilever, but the research submitted by Unilever showed that the shape was perceived by customers as an indication of the origin of cleaning and disinfecting products. According to the study, 58% of respondents recognised the shape of the green bottle with a red cap as the familiar cleaning liquid called “Domestos.” Thus the bottle itself, despite being used together with the Domestos label, indicated that the goods originate from Unilever.
Rosiński challenged this decision in the province administrative court, alleging that the consumer research was irrelevant because it was conducted two years after the end of the period used for determination of genuine use of the disputed mark. It accused the office of incorrectly accepting that use of a trademark along with additional verbal and graphic signs and other registered trademarks is genuine use of the Domestos mark. The court did not agree, but held that any evidence may be admitted it if helps clarify the case; even though the study by Unilever came from two years later than the period in question, it showed the use of the mark earlier, before the application to revoke the registration was filed. The high recognition of the Domestos mark in the form of the green bottle with a red cap demonstrated the intensity of use of the mark over a longer period. The applicant also did not provide specific reasons why the study should be rejected as unreliable. The court also agreed with the position of the Patent Office that the requirement of genuine use of a mark may be fulfilled also when the trademark is used in connection with another trademark.
Rosiński filed a cassation appeal with the Supreme Administrative Court, arguing that by placing other designations on the Domestos bottle, Unilever in reality used a different mark than the disputed mark, as the additional graphic and verbal elements altered its distinguishing power.
Judgment on cassation appeal and summary
By judgment of 21 March 2017, the Supreme Administrative Court denied the applicant’s cassation appeal. It held that the lower court had properly relied on the judgment of the Court of Justice of 18 April 2013 in Colloseum Holding AG v Levi Strauss & Co. (Case C-12/12), where it was held that the requirement of genuine use of a trademark (under Art. 15(1) of the Community Trademark Regulation (40/94)) may be fulfilled if the registered mark has gained distinguishing power as a result of its use an element of another complex trademark. The judgment is consistent with both EU and national case law (e.g. Białystok Court of Appeal judgment of 7 July 2011, Case I Co 305/11; Supreme Court judgment of 10 February 2011, Case IV CSK 393/10). The law does not prohibit a trademark holder from using several trademarks at the same time to designate the same good.
The Supreme Administrative Court also rejected the allegation of violation of the provision stating that use of a trademark is also understood to mean use of a mark differing from the registered mark in elements that do not alter its distinguishing character. The court explained that this provision applies to the situation where the mark used differs from the registered mark, but in this case the bottle mark was used in the same form as it was registered, only combined with other marks registered by Unilever.
Particularly notable is the position of the Supreme Administrative Court on evidence of use of a trademark, in the form of public opinion surveys. The court held that the Patent Office had correctly considered consumer research even though it was conducted two years after the end of the period being evaluated for genuine use of the mark. The high recognition of a trademark is typically the result of long and intensive use, so a subsequent survey should also be treated as credible evidence use of the mark.
Public opinion surveys may serve as significant evidence in cases of this type. They can confirm not only the use of a trademark, but also its renown and secondary distinguishing power. It has often happened that later surveys were rejected as evidence because of the date alone. It appears correct in particular to recognise the results of surveys which often refer to an earlier period, rather than to treat the formal date of the study as the only indicator of its reliability as evidence.
Monika Wieczorkowska, Intellectual Property practice, Wardyński & Partners