UNCONVENTIONAL TRADEMARKS IN THE WINE INDUSTRY 143 absolute ground for refusal –, the applicant may still argue that the sign’s “acquired distinctiveness” applied for as a trademark based on criteria laid out by the CJEU in Nestlé v Mars35: a) the market share held by the mark; b) how intensive, geographically widespread and long-standing the use of the mark has been; c) the amount invested by the undertaking in promoting the mark; d) the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and e) statements from chambers of commerce and industry or other trade and professional associations. Contrary to article 7(1)(b), point (e) is, in fact, one of the few exclusions that cannot be overcome by evidence that the sign indeed functions as a trademark, thus indicating origin36. Practically, this means that even if the applicant can present evidence of acquired distinctiveness, a sign consisting exclusively of a shape which falls under article 7(1)(e) will not be registered. Conversely, all other shapes not explicitly listed in the absolute grounds can be subject to trademark protection, provided, however, that they meet the distinctiveness threshold required for the registration of a trademark (distinctive character). Given that shapes can be inherently distinctive in very limited circumstances, applicants will be required to submit considerable evidence of acquired distinctiveness (see the criteria abovementioned). According to the CJEU, in Procter & Gamble v OHIM: “the relevant public’s perception is not necessarily the same in relation to a threedimensional mark consisting of the shape and colours of the product itself as it is in relation to a word or figurative mark consisting of a sign which is independent from the appearance of the products it denotes. Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element and it could therefore prove more difficult to establish distinctiveness in relation to such a threedimensional mark than in relation to a word or figurative mark”37. 35 Judgement of the Court (Second Chamber) 7 July 2005 In Case C-353/03, Société des produits Nestlé SA v Mars UK Ltd. 36 I. Fhima, Functionality in Europe: When do trademarks achieve a technical result? The Trademark Reporter MayJune, 2020 Vol. 110 No. 3, p. 663. 37 Procter & Gamble v OHIM [2004] E.T.M.R. 1176 ECJ, § 36.
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