Getting the marks out

The European Court of Justice has just given trademarks a thorough run through the wash, says Andrew Hobson

It is around a century since detergent products last had a major impact on trademark law, when the House of Lords decided the Dolly Blue passing off case.

The recent decisions by the European Court of Justice (ECJ) on the community trademark applications made by Henkel and Procter & Gamble for their respective dishwasher and washing machine tablets have brought detergents back into the trademarks limelight.

In the Dolly Blue case, the issue was whether there was protectable goodwill in the dolly or handle that protruded from packets of detergent. The cases before the ECJ concerned a number of issues relating the registrability of trademarks consisting of the shape and overall get-up of products. There are a considerable number of these marks being applied for, both domestically and at OHIM (the curiously-named Office for the Harmonisation of the Internal Market) and these decisions, in which, unlike the Dolly Blue case, the manufacturers lost, will not encourage other applicants. Both cases were final appeals following the refusal of OHIM to grant the trademarks applied for. They reached the ECJ via the OHIM Board of Appeal (BoA), the Court of First Instance (CFI) and the Advocate-General, each of which had upheld the decision of the examiner to refuse the marks, although the CFI decided the case on a somewhat different basis than the BoA.

Between them, the manufacturers had applied for a total of nine trademarks for the get-up of their detergent tablets. The issues in each case were the same, so much so that the Advocate-General issued a combined opinion. The ECJ gave two judgments, one for each company, which were so similar that there was evidently much use of copy and paste.

The core question of the appeals was whether a rectangular or square detergent tablet, combined with a particular arrangement of coloured parts of the tablet, and in the case of Procter & Gamble’s tablets a chamfered edge, had distinctive character. Distinctive character is trademark regulation-speak for inherent distinctiveness, as opposed to distinctiveness acquired by use.
Where the shapes of the tablets were named in the various decisions, curiously the language of 2D rather than 3D geometry was used.

The CFI had overturned the BoA’s determination that for ‘shapemarks’ there was a higher threshold of distinctive character to be achieved if the marks were to be registrable, but went on to say that where commonplace shapes were used in a product and where commonly used colours were used, as they are in detergents, that there were insufficient differences to give a trademark distinctive character. The ECJ upheld this analysis.

The decision was based on what the consumer would perceive. It is hard to make out from any of the decisions what evidence was before the courts, but from the frequent use of expressions such as “what the consumer would presume” found in the Advocate-General’s opinion, one suspects not much. It looks as though the consumer behaviours found by the CFI was simply a series of assumptions based on little or even no evidence. Because of this, it is all the more surprising that the ECJ held that issues of what consumers’ perception would be were findings of fact with which the appellate court could not interfere.

The ECJ was in no doubt that both a product shape and its colouring could constitute a trademark. Distinctive character has to be assessed by reference to both the type of product or service on which the trademark is used and by the perception of average consumers of the type of product or service in issue. Upholding the CFI, the ECJ found that consumers do not pay a great deal of attention to the get-up of their dishwasher tablets.

A number of issues of general importance arise from the case, which go further than the refusal of these nine marks and which may well put the cat among the pigeons for those who wish to register product shapemarks.

The first is the court’s approach to the factual issues of the case. It might be right that the average consumer pays little attention to the get-up of dishwasher tablets, but it is troubling that the court made such a positive determination without any reference to evidence. The CFI did not say, “The evidence before us establishes that…”, but merely asserted the approach of the average consumer without context.

The second is that the ECJ used the factual determination of the CFI on this particular case to make statements of general application about product shapemarks generally. These are undoubtedly going to be relied on in future product shape cases.

Third, having reached that conclusion on the basis of the dubious factual findings of the CFI, the ECJ, perhaps acting in fear like a rabbit in the headlights of the onrushing juggernaut of product shape applications, resorted to circular argument by holding that the CFI had not made an error of law.

So, what is the future for trademarks, for product shapes and get-ups? The ECJ makes clear that it is open to trademark proprietors to establish distinctiveness by the thorough use of the marks. Henkel and Procter & Gamble may be distinguishable in the case of an application for an unused product shape trademark supported by clear evidence of the attitude of consumers to the shape of the product in question. This would have to be based on focus groups and survey evidence, and perhaps expert evidence.

One might ask if proprietors would be prepared to undertake the necessary research, rather than putting resources into establishing distinctiveness by use.

This judgment does not quite take us back to the position of Lord Justice Aldous in Philips v Remington – that there is a class of signs which as a matter of law cannot be registered – but unused product shapes de facto, if not de jure, do appear to be such a class.

Andrew Hobson is a partner at Reynolds Porter Chamberlain