The advice came from Advocate-General Ruiz-Jarabo Colomer. It concerned a case that began in 1997 when German chemical company Henkel applied for Community trade marks in two rectangular tablets – one layered in white and red, the other in white and green.
The following year, Proctor & Gamble filed applications for Community trade marks in 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.
The case has now been appealed to the European Court of Justice, and the Advocate-General last week issued his non-binding, but influential, Opinion. He recommends that the appeals be dismissed.
An element of the Opinion that will be of interest to other trade mark-hopefuls concerns a change in character of the tablet shapes: while they were arguably unique at the time the trade mark applications were filed, they have since become commonplace, thereby losing any distinctive quality.
According to the Advocate-General:
"a sign must meet the requisite conditions [of distinctiveness], both at the time when the application is filed and on registration, which means that registration must be refused when a sign which was distinctive at its filing date has lost its distinctiveness in the course of the examination procedure".
This would not be the case, said the Advocate-General, where rivals had copied the would-be trade mark purely to "obstruct registration of competitors' marks". Such actions would be in bad faith and as such could be ignored by OHIM in assessing the application.
Colomer also considered whether the tablet shapes did have distinctive character. He wrote that a three-dimensional shape is distinctive:
"when it stands out from the usual get-up of the goods or (which amounts to the same thing) when the consumer, on looking at it, does not necessarily have the impression that he is perceiving it as an example of the relevant category or quality".
The lower court had found that "the level of attention given by the average consumer to the shape and pattern of washing machine and dishwasher tablets, being everyday consumer goods, is not high." Colomer, while acknowledging that he could not speak for the everyday consumer, agreed that this was likely.
But the Advocate-General was unsure whether the Court of First Instance had been swayed in its decision by a general interest in preserving the availability of the trade mark – i.e. the shape – for use by others, and was concerned that this was a factor that should not have been considered.
Still, Colomer stopped short of recommending the appeal be granted on this ground. He wrote:
"In the present case, it is significant that the appellants, who claim that the shapes of the washing tablets were not customary at the time when the application was filed, accept that they are now. That is perhaps the best proof that the test carried out was the right one."
The Court of Justice is likely to give it's ruling early next year.