In Appeal Proceeding TM 169606, Adjudicator of IP, Noach Shalev Shmulovich considered whether to allow a registered trademark for the shape of a vodka bottle.
The “Kremlyovskaya vodka bottle” in question is shown below:
The Applicant showed that the mark was successfully registered in other jurisdictions and
produced evidence of local and worldwide sales .
Following the Tofiffee decision 11487/03 August Storck vs. Alfa Intuit Food Stuffs Ltd. , the decision relates to the open question of whether containers should be protectable as trademarks.
The bottle in question has triangular base and upper section and a 3D picture of the Kremlin embossed into the neck.
There are, according to the decision, three categories of goods that can be considered as possible candidates for trademark protection:
- three-dimensional logos
- goods having distinctive, well known shape
- containers and packaging
It seems that the first category, e.g. car mascots, are clearly registerable, however articles like the Maglite which were successfully registered as trademark in Japan, would not be considered registerable as trademarks in Israel. The current decision related to the third category: containers and packaging.
The IP adjudicator reiterated that under TOFFIFEE, a product configuration cannot be registered on the basis of inherent distinctiveness, but may be registered only on the basis of acquired distinctiveness, provided that it has no functional or aesthetic features.
According to the IP adjudicator, the TOFFIFEE decision struck a balance between trademark protection and the laws on patents and industrial designs, which protect the functional and aesthetic features of products. The IP adjudicator believes that the Trademarks Office must consider the rationale underlying the different types of IP protection in deciding whether to register a trademark.
According to the decision, containers for fluids are functional by the fact they serve to contain a fluid and aesthetic by virtue of the specific form. The adjudicator thus considers bottles as closer to the being products than external packaging like a cardboard box would be. External packaging could be registered as a mark if it became distinctive with time, but containers for fluids are essentially functional and thus non-distinctive. We find the approach a little spurious since fluids can be enclosed by bottles of different shapes and sizes, and the question should be whether a specific shape serves as indication of origin, not whether it is aesthetically pleasing – which is irrelevant. To put it another way, a Platonic horse may be conceptual, but the flesh and blood real world manifestations of the idea may be distinctive.
To use trademark law to attempt to stop competition from taking advantage of technological improvements is misuse. So to take the flange found around the mouth of a soda bottle made of PET, which helps fabrication and filling, and to claim that as a trademark (or even as a design) would be unacceptible. There are, however, an infinite number of bottle shapes, and a small number of distinctive bottles. where a drink is sold in a distinctive bottle, such as Marmite, ketchup bottles, various whiskeys and perfumes, I fail to see reason to prevent it being protectable as a trademark.
The issue should simply be one of distinctiveness. If a bottle shape is distinctive, it should be protectable as a trademark to prevent competitors from using the same shape, and the protection could be for ever.
The arbitrator quoted decisions from 1949 and 1951 from the classic Seligsohn text. The world has changed since then though and manufacturing and packaging is very different.
According to the adjudicator, Judge Gronis of the trademark ruling would allow a container to be registered only if it has become well known, not if its shape is determined from functional or aesthetic considerations. The thing about bottles is that they are functional and their shape will have aesthetic aspects to it.
According to the decision, the requirement for trademark registration is an aquired distinctiveness. In my opinion, the issue should be whether the shape is more than merely functional and aesthetic and if it has inherent distinctiveness and is capable of being indicative of origin if not used by others.
In point 19, the adjudicator maintains that when deciding to grant a trademark, the adjudicator cannot ignore functionality and aesthetics. I agree with this in principle but not with the specifics of the case.
In point 22 the arbitrator rules that there would be an abuse if functional shapes were granted trademark protection, potentially for ever. Such an argument has some validity to prevent monopolistic protection of say Lego pieces after the design and patent rights expire by filing the shape as trademarks. That is not the case with containers however. With spirit bottles there are a number of functional equivalents.
The arbitrator presents an argument that the mere fact that a bottle is attractive, i.e. aesthetically pleasing, should prevent it being registered as a trademark.
He makes his point most elegantly in section 40: “Design features that are intended as trademarks, are not part of aesthetic design and are not functional, can, once recognized as such, be registered as designs.”
I disagree. If a bottle is distinctive, and indicative of origins of content, it should be registerable as a trademark. Consumer realizing that something is indicative of a particular origin may come later. I don’t see it should be a preconsideration. It isn’t for other types of mark.
Essentially, a corrollary of the decision, is that if a bottle shape is registered elsewhere as trademark or design and then published, it would not be registerable in Israel unless if had aquired distinctiveness. Others could use the mark in the meantime and prevent it aquiring distinctiveness. Arguably the laws of unjust enrichment could be invoked, but I don’t think so, since we would be talking about something not merely not registered, but not registerable.
The arbitrator claims that the embossed Kremlin might be registerable if filed separately.
In summary, I am not happy with the decision. I’ve seen worse though.
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