A trademark application for the shape of a Cointreau bottle was filed in March 2009. The application, No. 219577, covered a square bottle of amber coloured glass and is shown below.
The application was rejected in accordance with Circular M.N. 61 which ruled that for a container to be registerable it is required to fulfill three conditions:
- It has to be different from others
- It has to clearly serve the function of a trademark and be considered as such by the relevant public
- It has to be clearly associated with the product through long use
The applicant provided their evidence as an affidavit by Mr Duby Feintoch (name transliterated from the Hebrew – so maybe slightly different). However, the affidavit was not formulated as a proper affidavit and did not include the standard text warning the provider of the affidavit of his duty of honesty and endorsed by a lawyer. Furthermore, Mr Feintoch did not appear for cross-examination, consequently the Deputy Commissioner, Ms. Jaqueline Bracha, quoting the Stolnaya decision, (Israel TM 131391 from June 2005), indicated that it could not be given serious weight.
More problematic, the affidavit in question was originally provided as evidence in a different, earlier trademark application: TM 174399 for a Cointreau bottle, as shown below.
In the affidavit, Mr Feintoch stated:
“The square bottle with rounded shoulders, bright red ribbon and warm amber color depicted in the trademark has remained virtually unchanged for more than 150 years, since its creation in 1849…” (The bright red ribbon is underlined in the decision by the Deputy Commissioner).
Appended to the affidavit were a series of examples showing the usage of the 174399 mark, where the word Cointreau and the red ribbon are clearly displayed, and a catalogue submitted where the label and ribbon were also clearly shown.
Ms Bracha also noted that the name of the designer and founder of the company, Edouard Cointreau is also cast into the glass of the bottle.
The applicant submitted that it is not rare for a product to carry a number of trademarks, and Ms Bracha concurred with this statement, but, quoting J. Thomas McCarthey (sections 7-1 and 7-12 of McCarthey on Trademarks and Unfair Competition (2011), noted that sometimes less is more.
“There is a limit, of course, on the trademark significance of each word, number, picture, slogan, etc., appearing on a product. Not everything that appears on a label can be said to be, by itself, of trademark significance. A seller who claims trademark significance in each and every element of a label or package is overreaching and may alienate the judge whose protection he seeks.
When a label or advertisement contains a cluttered morass of claimed marks in many words, slogans and designs, no one of these things is likely to make a significant trademark impression on customers. If a given designation is a trademark, that should be immediately evident to the ordinary buyer. If it takes extended analysis and legalistic argument to attempt to prove that a designation has been used in a trademark sense, then it has not.”
Ms Bracha noted that some of the elements such as the word Cointreau were clearly registerable. However, on searching for square liqueur and spirit bottles, she noted that there are other square bottles on the market, including square bottles cast in amber glass, and gave an example of a tequila bottle from Don Julio as an example. Furthermore, there are a large number of whiskey and liqueur bottles such as Amaretto, Ballentyne’s and Disaronno, that are essentially square with a round neck, and these appear amber, at least by virtue of the content. Ms Bracha then suggested that possibly the Cointreau bottle was as distinctive as claimed in “Les Alcohols du Monde”, submitted by the applicant, but that today, this is no longer the case.
In conclusion, Ms Bracha ruled that it was unreasonable to give a perpetual monopoly for a container shape to one party when others were already using it, and when the shape alone could not be used to distinguish the source of the content.
A further piece of evidence provided by the applicant was a book “Cointreau, the Saga of the world-wide brand” which claimed that most people can recognize the bottle by touch alone. Ms Bracha suggested that that was probably true where the name of the designer is cast into the bottle and can be felt, but was not sure that this was true from the general shape. She also questioned the objectivity of the book.
In summary, Ms Bracha ruled that the bottle shape wasn’t sufficiently distinct and that the applicant had failed to provide convincing evidence that it was used as a trademark.
The Decision: Re TM 219577 to Cointreau, ruling by Jaqueline Bracha 2 April 2013.
I suspect that the claim of trademark significance in the bottle shape and colour was overreaching and alienated the judge whose protection was sought. The sloppy submission of an affidavit for a different mark, including the red ribbon and label was enough to alienate the judge from the application. I think this ruling is generally well reasoned although objectively I think the bottle (which is a classic of poor design from a manufacturing point of view) is sufficiently distinctive to be registerable. Presumably, the original mark (TM Application No. 174399) with ribbon and label would now be considered registerable if resubmitted.
The applicant (or his agent?) provided the wrong affidavit, arguing that the bottle with ribbon and label were distinctive. This argued against providing rights to the bottle shape alone. That and the fact that the affidavit wasn’t in proper format seems to have goaded the examiner into doing her own search and discovering various other square bottles. However, none are really like Cointreau’s, which I think I would recognize from a distance in a duty free outlet, by shape alone. I collect liqueurs when flying abroad, but am hardly a heavy drinker. Ms Bracha is correct that it would be unreasonable to give a perpetual monopoly for a container shape to one party when others were already using it, but I don’t think anyone else is using a Cointreau shaped bottle, so I think the shape alone can be used to distinguish the source of the content. I accept that the uniqueness in the relative proportions of a bottle is less than that of the general shape, and there are other square bottles, but personally, wrong affidavit aside, I think the mark should be registerable since none of the the other liqueur or whiskey bottles on the market have similar dimensions and so this shape is distinctive. Competing liqueurs could, of course, oppose the registration. However, I believe that were the mark to be registered it should be narrowly interpreted by the courts and restricted to bottles with similar dimensions on being presented with evidence of other square liqueur bottles.