148 WINE LAW in turn, confirmed that decision, leading to Vinicola Tombacco then filing an appeal before the EU General Court. The Court issued its decision on 08 May 201946, examining the following absolute grounds for refusal, brought forward by ViTo: Article 7(1)(b), regarding signs which are devoid of any distinctive character; Article 7(1)(e)(i), regarding signs which consist exclusively of the shape, or another characteristic, which results from the nature of the goods themselves; Article 7(1)(e)(ii), regarding signs which consist exclusively of the shape, or another characteristic, of goods which is necessary to obtain a technical result; and Article 7(1)(e)(iii), regarding signs which consist exclusively of the shape, or another characteristic, which gives substantial value to the goods. Before examining each of the above grounds, the Court made a significant observation regarding the application of article 7(1)(e). Further to the Trademark Reform, the absolute grounds for refusal concerning shapes were extended to all “non-traditional” characteristics (“or another characteristic”), such as colour. However, since the case under examination commenced prior to the enactment of the Trademark Reform (i.e. 23 March 2016), the Court noted that the absolute grounds for refusal should apply in the previous wording, which did not include “another characteristic”47. Noting that the evidence ViTo submitted – consisting primarily of Internet images – did not take into account the sign as a whole (i.e. its colour, the letter B and the flame design element), thus not being sufficient and appropriate to support the argument that the bottle’s particular shape (collio) was widely used in the said market48, the Court dismissed ViTo’s claim on the trademark’s lack of distinctive character Interestingly, there was a paradox (also highlighted in ViTo’s arguments): the Board of Appeal, on the one hand, dismissed the application of article 7(1)(b), thereby finding that the sign (at least at the point of examination from the EUIPO Examiner) is not devoid of distinctive character, but, on the other hand, 46 Decision on Bottega’s gold trademark: Judgment of the General Court (Sixth Chamber) of 8 May 2019 in Case T-324/18, Vinicola Tombacco (VI.TO.) Srl v European Union Intellectual Property Office and Sandro Bottega. 47 Ibidem, 48 §§ 15-19. 48 See supra note 46, § 30.
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