The series of nine connected appeals to the European Court of Justice dates back to 1997 when German chemical company Henkel applied for Community trade marks for two rectangular tablets – one layered in white and red, the other in white and green.
The following year, Proctor & Gamble filed applications for seven Community trade marks for square tablets with rounded edges and corners – all of which were layered in different colours, or were white with coloured speckles.
On each occasion the examiner with the Office for Harmonisation in the Internal Market (OHIM) refused the applications.
The ground for refusal was that the tablets did not have a sufficiently distinctive character. The appeals board and the European Court of First Instance agreed, each dismissing the two companies' appeals.
In its judgment the Court of First Instance ruled that only a mark that highlights the origin of the goods or services for which a registration is sought has distinctive character.
The Court explained:
"It is not necessary for that purpose for the mark to convey exact information about the identity of the manufacturer of the product or the supplier of the services. It is sufficient that the mark enables members of the public concerned to distinguish the product or service that it designates from those which have a different trade origin and to conclude that all the products or services that it designates have been manufactured, marketed or supplied under the control of the owner of the mark and that the owner is responsible for their quality."
On this occasion the shape, use of colour, speckles and layers in the respective tablets were not sufficiently distinctive from other tablets in the market to allow a trade mark to be registered, said the Court of First Instance.
The European Court of Justice has now upheld that ruling. In considering the appeals by Proctor & Gamble, the ECJ commented:
"the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character for the purposes of [EC law]. Only a trade 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."
The Henkel judgments, which have not been published in English, took a similar line, according to a report by Legal Media Group.