Kabushiki Kaisha Yakult Honsha's Trade Mark Application for the shape of a Bottle as a Trade Mark in Classes 29 and 32.

Date

8 March 2001

Legislation

Trade Marks Act 1994 ss.3(1), 3(2)

Keywords

trade mark registration; three-dimensional trade marks; acquired distinctiveness; survey evidence

Counsel

Simon Thorley QC, Daniel Alexander

Solicitors

Unknown

Judge

Pumfrey J.

Court

High Court (Chancery Division)

Reported

[2002] RPC

Summary

This was an appeal by the applicant from a decision of Alan James for the Registrar of Trade Marks whereby he refused to register the shape of a bottle as a trademark on the basis that it was devoid of distinctive character pursuant to s3(1)(b) of the Trade Marks Act 1994.

Mr James in his decision noted that 'it appears to me that the average consumer's first impression of the shape of the applicant's bottle is likely to be that it is a pretty ordinary shaped bottle with an indentation for use as a finger grip. If that is right the shape of the applicant's bottle is unlikely to be regarded as denoting trade origin until the public have been educated to such a secondary meaning.'

On appeal the applicant submitted that this finding amounted to an indirect finding of functionality under s3(2). This argument was rejected, and Laddie J agreed with Mr James that the average consumer was likely to conclude that the design in the applications was nothing more than a bottle of pretty ordinary shape.

In relation to the claim that the bottle shape had acquired distinctiveness, the applicant submitted a survey which stated that 38% of respondents in the South East of England identified the bottle shape as that of the applicant. Laddie J held that the survey had a number of failings, not least the fact that it was far too leading to show the Coca-Cola bottle (which has strong trade mark significance) prior to asking about the applicant's bottle. Furthermore there was nothing in the survey to suggest that Yakult had educated the public that the shape of the bottle had trade mark significance.

Decision

Consequently Laddie J agreed with Mr James' findings and refused the appeal. On the issue of acquired distinctiveness in relation to three dimensional trade marks note that that further clarification of this issue was sought from the European Court of Justice by a reference in the case of Case C-7/03 Nestlé v Unilever. However, that reference has now been removed from the ECJ register. See also Philips v Remington (Court of Appeal).