Denied to Bottega Veneta bags the possibility of registration as a three-dimensional trademarks

On 22 March last, the General Court of the European Union ("GC") delivered in Cases T-409/10 and T-410/10, on actions brought by Bottega Veneta International Sarl ("BV") against the decisions of Board of Appeal of the Office of Harmonization in the Internal Market ("OHIM"). With the above-mentioned decisions, the Board of Appeal had denied to BV the registration as Community three-dimensional trademarks of two different forms of handbag, one characterized by the particular shape of the handles and the other by the absence of closures. BV had then challenged those decisions before the GC on the basis of the alleged infringement by the OHIM of Article 7 (1) (b) and (3) of Regulation 207/2009 on the Community trade mark, under which "are excluded from registration marks which are devoid of any distinctive character", except that the marks in question have acquired distinctive character following the use which has been made. BV had justified their actions by claiming that the trade marks had intrinsic distinctive character and that, in any case, had acquired this character following the use which had been made. Moreover, according to BV, the OHIM had been wrong in not considering the interwoven appearance of the surface of the bags. By judgments of last 22 March, the GC has rejected the appeals of BV, thus confirming the decisions of the Board of Appeal of OHIM. The GC stated that although the criteria for determining the distinctive character of three-dimensional marks are the same as those used for the other categories of trademarks, in practice it may be more difficult to establish distinctiveness of a three-dimensional mark characterized by the shape of a product. To determine whether the outward form of a bag has distinctive character, it is necessary to assess whether the same deviates significantly from the norm and customs of the sector. In the present case, the GC considered that the position of the handles and the lack of closure were simple variants of the standard product and do not therefore represent features that customize the bags and that indicate an exact commercial origin. About the interwoven appearance of the surface of the two handbags, the GC argued that the OHIM had acted correctly in not taken it into account in the assessment of the distinctive character because this feature was not in the application for registration, and should have been included in the description.

05/20/2013 | Trade Mark