Wine Law

UNCONVENTIONAL TRADEMARKS IN THE WINE INDUSTRY 147 Furthermore, the reference to the bottle’s aesthetic appeal and design leads us to article 7(1)(e)(iii) EUTMR and the absolute ground according to which a sign cannot be registered as a trademark if it consists exclusively of the shape, or another characteristic, which gives substantial value to the goods. This provision is considered by many as the European equivalent of the US “aesthetic functionality doctrine”, according to which when goods are bought mostly for their aesthetic value, their features may be functional because they definitely contribute to that value and thus aid the performance of an object for which the goods are intended. The determination of whether such features are functional depends upon the question of whether the prohibition of imitation by others will deprive the others of something that will substantially hinder them in competition42. One of the first cases to address the issue of aesthetic functionality in Europe was Bang & Olufsen v OHIM43, in which the General Court found that the design of Bang & Olufsen’s loudspeaker is a critical element in the consumer’s choice, even if the consumer also takes the good’s other characteristics into account. The Court noted that the shape for which the registration was sought reveals a very specific design and the applicant itself admits that this design is an essential element of its branding, increasing the appeal of the product at issue, that is to say, its value44. The Court also referred to evidence, namely extracts from distributors’ websites and online auction or second-hand websites, that the aesthetic characteristics of that shape are emphasised first and that the shape is perceived as “a kind of pure, slender, timeless sculpture for music reproduction, which makes it an important selling point”45. Accordingly, the General Court reached the decision that the shape in question gives substantial value to the goods concerned. It is interesting to note that, what was perceived as a very strong distinctive character (“the design is an element which will be very important in the consumer’s choice”) was, at the same time, critical in determining that the shape gave substantial value to the goods [under 7(1)(e)(iii) EUTMR] and was, thus, not registrable. Going back to Sandro Bottega’s case, on 22 March 2017, EUIPO’s Cancellation Division dismissed Vinicola Tombacco’s grounds for invalidity, taking the view that the additional distinctive features in Bottega’s contested mark created an overall impression, which was sufficient to confer distinctive character. The case was then brought before EUIPO’s Board of Appeal, which, 42 Restatement (First) Of Torts § 742 (1938) § 742, cmt. a. 43 Judgment of the General Court (Eighth Chamber), 6 October 2011, In Case T-508/08, Bang & Olufsen A/S v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM). 44 Ibidem, §§ 73-74. 45 Ibidem, § 75.

RkJQdWJsaXNoZXIy MTE4NzM5Nw==