146 WINE LAW IV.2.3. VINICOLA TOMBACCO AND SANDRO BOTTEGA One of the most interesting cases focusing on the registrability of a bottle-shaped 3D mark in the wine industry is that of Vinicola Tombacco and Sandro Bottega, with the case touching upon more than one absolute grounds for refusal concerning the registering of a non-traditional trademark. In 2013, Sandro Bottega (Colle Umberto, Italy) filed applications before the EUIPO for the registration of two trademarks in Class 33: a three-dimensional mark of a bottle’s shape, together with the letter “B”, one in colour gold and one in shimmering pink (Image 12). In 2016, Vinicola Tombacco (also referred to as “ViTo”) challenged the validity of Bottega’s trademarks, submitting an action of cancellation before the EUIPO for both trademarks, on the ground that the shape of the bottle resulted from the nature of the goods, thus violating article 7(1)(e)(i) EUTMR. Vinicola Tombacco further supported that41: the bottle’s aesthetic appearance only justified limited time protection, which is a matter for design protection, as opposed to the potentially unlimited protection afforded by trademark law; the bottle’s shape is commonly used to bottle the Prosecco DOC wines, with the choice of gold colour reflecting this type of wines; and the shape and colour of the bottle do not differ from the standards of the wine sector. It is worth noting that Vinicola Tombacco’s argumentation is, in practice, based on more than one absolute grounds for refusal – and not just article 7(1)(e)(i) EUTMR, whereby the shape results from the nature of the goods. More specifically, by arguing that the shape and colour of the bottle do not deviate from the wine sector’s norms, the company invoked article 7(1)(b) EUTMR and the ground that the sign is devoid of any distinctive character. 41 Can you trademark the shape of a wine bottle? https://www.novagraaf.com/nl/node/907, last accessed on 19 November 2020. Image 12. Sandro Bottega’s bottles
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