The Perception of Three-Dimensional Trade Marks by the Relevant Consumer
March 16th, 2015 by IPKM blog
For the first time, students from the Advanced Master in Intellectual Property Law and Knowledge Management’s (IPKM) attended the “XII Community Trade Mark Intensive Module” in Alicante (Spain), organised by Magister Lvcentinvs of University of Alicante in cooperation with the Office of Harmonisation for the Internal Market (OHIM) and leading specialist firms.
One of the main goals of the Intensive Module is to up-date IP lawyers, IP law graduates and IP professionals on the developments and practice of Community trademarks. Therefore, from February 2 to 6, 2015, OHIM’s speakers and IP practitioners from prestigious firms gave expert lectures covering substantive and procedural topics related to Community trademarks (CTM).
The expert lecture entitled “TM from the Practitioners Perspective: The relevant Consumer of Trademarks”, given by Cristina Bercial, Attorney at Law and at Casalonga, addressed how the perception by the relevant consumer is dealt with in inter-parte and ex-parte proceedings regarding three-dimensional trademarks.
According to the speaker, especially in opposition and invalidation inter-parte proceedings, the likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case: the distinctiveness of the earlier mark, the degree of similarity between the signs and the goods and services, the impact of the kind of goods and services on the assessment of resemblances and the degree of sophistication and attentiveness of the relevant consumer. It is the last factor that the speaker assessed in greater detail.
Who is the relevant consumer?
The relevant consumer is someone to whom the goods or services covered by the conflicting trademarks are directed. In the context of inter-parte proceedings, if the prior mark is a CTM, the public in the entire Community has to be taken into account; if the earlier mark is a national right, the relevant consumer will be the consumer of that particular Member State. Therefore, if a significant part of the relevant public may be confused about the badge of origin of the goods or services covered, this is enough to establish a likelihood of confusion. In other words, the risk of confusion in one Member State is enough for an opposition to be upheld.
What are the types of relevant consumers?
Christina Bercial argued that there are three types of relevant consumers: average consumers, professional consumers and the combination of both. The degree of sophistication and attentiveness must be taken into account for every type of the relevant consumer. The degree of sophistication refers to an educated consumer who is reasonably well informed. The degree of attentiveness refers to a consumer being reasonably observant and circumspect to the goods or services s/he purchases.
In this sense, for the first type of consumer (average consumer), the level of attentiveness varies according to the category of goods or services in question. If we are dealing with goods or services that are mass consumption and inexpensive, the average consumer pays a low degree of attention. On the contrary, if the characteristics (expensive, infrequent, risky) of the goods or services require that the average consumer examines them carefully or seeks professional assistance, the high level of attention paid to the product may reduce the likelihood of confusion.
Take the example of pharmaceutical products with and without prescription. Cristina Bercial pointed out that formerly, it was considered as a general rule that the average consumer displayed high attention only to prescription pharmaceuticals because they were perceived to be risky purchases. However, in 2014, this criterion was adapted in the OHIM guidelines, foreseeing a high degree of attentiveness by relevant consumers for pharmaceutical products with or without prescription.
The second type of relevant consumer (professional consumer) is a specialized consumer who is likely to display a higher degree of attention than the average consumer at the moment of purchasing the goods or services. This is the case for goods or services such as welding and cutting gases, financial services and motor vehicles (not spare parts) because technical or very specialized knowledge is required for purchasing them. Thus, a good knowledge of the market situation regarding the goods or services in question tends to reduce the likelihood of confusion.
According to Cristina Bercial, we deal with the third type of the relevant consumer (average and professional consumer) when the goods or services in question are intended for professionals and end-consumers. An example are pharmaceutical products that target both healthcare professionals and patients.
So how to determine the relevant consumer?
The following situations need to be distinguished:
- If the goods or services of both marks are targeted at the general public, the relevant consumer is the average consumer.
- If the goods or services of both marks are directed to the same or to a specialized public, the relevant consumer would be the professional consumer.
- If the products or services of both marks are targeted to the general public and to professionals at the same time, the relevant consumers are the average and professional consumer. The risk of confusion, however, will be assessed against the perception of the general public, being the average consumer.
- If the goods and services of the earlier mark are targeted at the general and professional public but the contested goods and services are targeted exclusively at a professional public or vice versa, the relevant consumer would be only the professional public.
The perception of relevant consumers in ex-parte proceedings
In ex-parte proceedings, the perception of the relevant consumer is important in order to determine the distinctive character of a trademark. The distinctive character of a trademark must be assessed by reference to 1) the goods or services in respect of which registration has been applied for and 2) the perception by the relevant public. This criterion is also applicable for three-dimensional trademarks that consist in the appearance of the product itself. However, the perception of the relevant consumer is not the same in relation to three-dimensional trademark as it is in relation to a word or figurative mark consisting of a sign which is independent from the appearance of the products it designates.
Cristina Bercial referred to established case law by the CJEU that the relevant consumer is not in the habit of making assumptions about the badge of source of the goods by considering their shape or their packaging shape, in the absence of any graphic or word element and in consequence, it is more difficult to prove the distinctive character of a three-dimensional trademark than a word or figurative mark. Therefore, in those circumstances, only a trade mark that departs significantly from the norm or customs of the sector and thereby fulfils the essential function of indicating origin, is not devoid of any distinctive character.
An example is the Freixenet case, in which the Court of Justice of the European Union  held that the General Court had infringed Article 7(1)(b) of the CTM Regulation because it did not establish whether the marks for which registration was sought (appearance of the sparkling wine bottles) varied significantly from the norm or customs of the sector. Instead, the General Court merely stated in a general manner that since no bottle had been sold by Freixenet without a label, or an equivalent, only the word element could determine the badge of source and therefore the colour and matt appearance of the glass of bottle could not function as a trademark for sparkling wines.
In a recent decision of January 14, 2015,  the General Court reiterated and followed the CJEU approach, regarding the perception of the relevant consumer in cases of three-dimensional marks. In that case, a three-dimensional mark was at issue that consisted in a bottle shape for mineral water. The Court found that the mark did not depart significantly from the norm or customs of the sector because it consisted in a cylindrical shape with narrowing in its upper part, which is a common element in most bottles sold in the market. The hexagonal shape in the upper part which the applicant referred to as a diamond was only a variant of the classic shape of the bottle and it was not capable of distinguishing the commercial origin of the goods.
Thus, in conclusion, a three-dimensional shape can either be registered if 1) the relevant consumer perceives the mark as a shape that departs significantly from the norm or the customs of the sector and thereby displaying a distinctive character, or 2) in case such distinctive character is lacking for the shape as such, any graphic or word element added to such shape or its packaging shape will provide the distinctive character and secure registrability as a Community Trademark.
By Verónica Rodríguez Arguijo
 OHIM, Opposition Division, No. B 1 607 210, Wrangler Apparel Corp v Vizioncore Inc, 29 October 2010.
 C-342/97, Llyod Schufabrik Meyer & Co. GmbH v Klijsen Handel BV, 22 June 1999, paragraph 26.
 General Court, Case T-547/08, X Technology Swiss GmbH v OHIM, 15 June 2010, paragraph 43-45.
 General Court, Case T-331/09, Novartis AG v OHIM, 15 December 2010 paragraph 26; General Court, Case T-288/08, Cadila Healthcare Ltd v OHIM, 15 March 2012, paragraph 36.
 General Court, Case T-106/06, Demp BV v OHIM, 23 January 2008, paragraph 33.
 General Court, Cases T-305/06 – T-307/06, Air Products and Chemicals v OHIM, 15 October 2008, paragraphs 32-34.
 General Court, Case T-10/07, FVB Gesellschaft für Finanz- und Versorgungsberatung mbH v OHIM, 17 September 2008, paragraph 35.
 ECJ, Case C-361/04 P, Claude, Paloma, Marina and Bernard Ruiz-Picasso and Maya Widmaier-Picasso v OHIM, 12 January 2006, paragraph 39.
 ECJ, Case C-412/05 P, Alcon Inc v OHIM, 26 April 2007, paragraphs 56-61.
 ECJ, Case C-304/06 P, Eurohypo AG v OHIM, 8 May 2008, paragraph 67.
 ECJ, Case C-456/01, Henkel KGaA v OHIM, 29 April 2004, paragraphs 38 and 39.
 ECJ, Cases C-344/10 and C-345/10, Freixenet SA v OHIM, 20 October 2011, paragraphs 50, 52 and 55.
 General Court, Case T-70/14, Research and Production Company <<Melt Water>> UAB v. OHIM, 14 January 2015, paragraphs 1-6, 20-21.