OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION of the First Board of Appeal of 8 July 2010

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1 OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) The Boards of Appeal DECISION of the First Board of Appeal of 8 July 2010 In Case R 366/ CONTESSA PREMIUM FOODS, INC. 222 West Sixth Street, 8th Floor San Pedro, California United States of America Applicant / Appellant represented by Patentanwälte MAIKOWSKI & NINNEMANN, Kurfürstendamm 54-55, D Berlin, Germany APPEAL relating to Community trade mark application No THE FIRST BOARD OF APPEAL composed of Th. Margellos (Chairperson), M. Bra (Rapporteur) and C. Rusconi (Member) Registrar: C. Bartos gives the following Language of the case: English

2 2 Decision Summary of the facts 1 By an application filed on 27 March 2009, Contessa Premium Foods, Inc. ( the applicant ) sought to register the three-dimensional mark which is reproduced below, and for which the colours white, red and pink were claimed for the following list of goods: Class 29 Shrimps, not alive. 2 On 5 June 2009, the examiner notified the applicant that the trade mark was not eligible for registration under Article 7(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark, (OJ L 78 of , p. 1) ( CTMR ) - codified version of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ EC 1994 No L 11, p. 1; OJ OHIM 1/95, p. 52). The examiner pointed out that the features of the mark are not distinctive and that the shape is not markedly different from various basic shapes for the goods at issue which are commonly used in trade, but is simply a variation on those shapes. As a result, it would not enable the relevant public immediately and with certainty to distinguish the applicant s goods from those of another commercial origin. 3 The applicant filed observations in reply. It essentially argued that the mark does not depict a single shrimp but an unusual arrangement of shrimps which is uncommon and goes substantially beyond known ways of commercially trading and offering shrimps. Such arrangement, which has not been used by others, also contradicts common rational ways of packaging shrimps. Even if their level of attention is low, consumers will be able to identify and distinguish it from others with a different origin. 4 On 19 January 2010 the examiner notified the applicant of his decision ( the contested decision ) that the application was rejected under Article 7(1)(b) CTMR. The examiner reiterated the grounds of objection stated in the previous communication and further reasoned as follows:

3 3 The arrangement is not unusual. It merely represents one of the various possible alternatives. Some examples which are taken from the Internet show similarities with the sign under examination. The fact that the claimed goods are shrimps and that the sign depicts an arrangement of shrimps but not a single shrimp does not confer the mark with a distinctive character. On the contrary, the sign does not deviate from the usual presentation of this type of goods. Even if no other company uses that exact arrangement, this is not sufficient in itself to overcome the absolute ground objection of non-distinctiveness. The argument that the particular arrangement is not practical is of little relevance as regards the assessment of the distinctive character of the sign. 5 On 16 March 2010 the applicant filed a notice of appeal against the contested decision. The statement of the grounds of appeal was filed on 19 May The appeal was submitted to the examiner for revision and was remitted to the Boards of Appeal on 28 May Grounds of appeal 6 The applicant requests the Board to annul the contested decision and accept the trade mark application for registration. The applicant s arguments can be summarised as follows: The trade mark in question is a three-dimensional shape which consists of an arrangement of shrimps in a two-layered circle, with their heads pointing inwards and their tails pointing outwards. The result is the shape of a ring which appears light (light pink) at its inside portion and forms two dark red circles at its outer edge and which goes beyond the ordinary, generic shape of the goods in question. The relevant public will recognize that three-dimensional shape by its particular shape and colour appearance and will associate it with an indication of the origin of the products. The claimed products are shrimps, even though the mark does not represent a single shrimp but an arrangement of shrimps. Hence the mark goes beyond the general shape of the particular product in question, namely the shape of a shrimp. The images which were given as examples in the contested decision are different to the particular arrangement of the mark at issue: none of them show shrimps which are aligned in the form of a ring with their heads inwards and their tails outwards and with the same particular colour combination.

4 4 Reasons 7 The appeal complies with Articles 58, 59 and 60 CTMR and Rule 48 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark ( CTMIR ) (OJ EC 1995 No L 303, p. 1; OJ OHIM 2-3/95, p. 258) as amended by Commission Regulation (EC) No 1042/2005 of 29 June 2005 (No L 172 p. 4). It is, therefore, admissible. 8 However, the appeal is not well founded. 9 As the General Court has held, the marks referred to in Article 7(1)(b) CTMR are, in particular, those which do not enable the relevant public to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned (see judgment of 27 February 2002 in Case T-79/00 Rewe Zentral AG v OHIM ( Lite ) [2002] ECR II-705, at paragraph 26). 10 It is settled case-law that a sign s distinctiveness can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, to the relevant public s perception of that (see judgment of 9 October 2002 in Case T-360/00 Dart Industries Inc. v OHIM ( UltraPlus ) [2002] ECR II-3867, at paragraph 43). 11 The Court of Justice has held that the criteria for assessing the distinctive character of three-dimensional marks consisting of the shape of the product itself are no different from those applicable to other categories of trade mark. None the less, for the purpose of applying those criteria, the relevant public's perception is not necessarily the same in the case of a three-dimensional mark consisting of the shape of the product itself as it is in the case of a word or figurative mark consisting of a sign which is independent from the appearance of the products it denotes. Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element and it could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark (see judgments of 7 October 2004 in Case C-136/02 P Mag Instrument Inc. v OHIM ( Torches ) [2004] ECR I-9165, at paragraph 30; and of 31 May 2006 in Case T-15/05 Wim De Waele v OHIM ( Sausage ) [2006] ECR II-1511, at paragraphs 30 and The assessment of the distinctive character of those signs must be based on the assumption that only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) CTMR (see judgment of 12 January 2006 in Case C-173/04 P Deutsche SiSi- Werke GmbH & Co. Betriebs KG v OHIM ( Standbeutel ) [2006] ECR I-551, at paragraph 31). 13 In the case at hand, the goods in question are products of everyday consumption which are targeted at the public in general.

5 5 14 The mark depicts an arrangement of shrimps in a two-layered circle. In the applicant s opinion, the sign has two features which endow it with a distinctive character: firstly, that all the shrimps are placed in a way which forms a ring, with their heads pointing inwards and their tails pointing outwards; secondly, that the ring also shows a particular colour combination, namely light pink at its inside portion and two dark red circles at its outer edge. 15 In the present case, it seems appropriate to consider, first, whether or not the relevant consumers are aware that the way in which the products are arranged may indicate their commercial origin. That is to say, if the decision of buying the products is simply determined by such arrangement or if, on the contrary, consumers will rather pay attention to other elements which indicate the commercial origin of the products (see judgment of 12 September 2007 in Case T-358/04 Georg Neumann GmbH v OHIM ( Mikrophon ) [2007] ECR II-3329, at paragraphs 44 to 46). 16 In this respect, the Board is not convinced, nor has it been provided with any kind of evidence, that the general public may realize that the particular manner in which foodstuff products in general (and shrimps in particular) are displayed is also used as a means of information about the commercial identity of their producer. In other words: that consumers may think a certain arrangement of the goods in question may have for example aesthetic or practical purposes; or that they may even think that certain producers pay more attention than others to the way in which their products are presented. The Board finds however that it is extremely unlikely that the relevant consumers in the case at hand may be aware that the arrangement of the goods also serves as an indicator of their commercial origin. On the contrary, it results from the experience generally known that consumers choose the products in question following the information which usually appears on the box or bag in the form of a label (see, by analogy, judgments of 8 July 2009 in Case T-28/08 Mars, Inc. v OHIM ( Chocolate bar ) [2009] ECR II-106*, at paragraph 33; and of 4 October 2006 in Cases T-188/04 and T-190/04 Freixenet SA v OHIM ( Botella esmerilada ) [2006] ECR II- 78/79*, at paragraph 77). 17 Therefore, and as regards this first part of the analysis, it must be concluded that the arrangement as such of the goods, or the way in which they are displayed, does not lend particularly well to individual identification of the relevant products. 18 It is also appropriate to consider, as a second step of the analysis, that, even if the average consumer of those products was fully able to perceive the way in which they are arranged as being an indication of their origin, this finding would not mean that every arrangement is distinctive. To find, in such a scenario, that the mark applied for has distinctive character, it would also be necessary to examine if the arrangement in question has good enough characteristics to retain the public s attention (see Mikrophon, cited above, at paragraph 47). 19 As pointed out above, the mark is a three-dimensional representation of a certain arrangement of the products shrimps forming a ring. In the Board s opinion, there is nothing in this way of displaying the products which may attract the

6 6 consumer s attention as an indicator of origin. As the examiner correctly explained, if one had to order a number of shrimps on a circular plate, presenting them in this way would certainly be considered commonplace. It is indeed likely that many of the relevant consumers may have already used this style of presentation themselves. It seems of little relevance that the representation depicts an arrangement of several shrimps and not a single shrimp. In any event, the representation shows an object which is undistinguishable from the claimed products themselves. 20 It may be true that the relevant products are sometimes sold in bags or boxes in an unordered way. However, it is also true that seafood (fresh fish, shrimps) is usually presented arranged in a line. It must be emphasised that an aesthetically attractive presentation is particularly relevant in the case of foodstuff. This is naturally linked to the idea of freshness or cleanliness or even to the idea that such presentation is more appropriate for serving as a starter, on a buffet or at a cocktail. As a result, the Board believes that presenting shrimps in a circled, ordered way, is not unusual and will not retain the public s attention as an indicator of origin. 21 The Board is also unable to find any striking, distinctive feature in the particular combination of colours which is present in the sign. The coloured global picture given by the mark (light pink and dark red) is defined by the natural colours of the product. The shrimps themselves being light pink and red, will when displayed together in an ordered, circular way, result in the different colours being perceieved in an ordered, circular way. 22 When considered as a whole, the overall impression which is given by the mark does not possess any distinctive character. The relevant public, whose level of attention in this case is not particularly high, will limit itself to perceive in this sign a mere assortment of shrimps in an ordered, circular way. 23 The fact that the examples which were given by the examiner may be slightly different to the sign at hand is insufficient in itself to conclude that the mark at issue is distinctive. In the Board s opinion, the arguments which have been put forward above allow to conclude that the mark does not possess any distinctive character. Moreover, it should be stressed that it is the applicant who must provide precise indications showing that the mark has an inherent distinctive character (see judgment of 23 September 2009 in Case T-396/07 France Télécom v OHIM ( Unique ) [2009] ECR publication pending, at paragraph 26). 24 It results from the foregoing that the examiner rightly concluded that the sign lacks any distinctive character under Article 7(1)(b) CTMR. The Board finds that the relevant consumers will be unable to recognize it as an indicator of origin. 25 It follows that the appeal must be dismissed.

7 7 Order On those grounds, THE BOARD hereby: Dismisses the appeal Th. Margellos M. Bra C. Rusconi Registrar: C. Bartos