UNCONVENTIONAL TRADEMARKS IN THE WINE INDUSTRY 149 held that the sign is not distinctive enough to give substantial value to the goods, thereby triggering the application of article 7(1)(e)(iii). The Court responded to this contradictory point by underlining that the EUIPO’s Board of Appeal never argued in its decision that the sign’s distinctive character is extremely reduced. As a matter of fact, such an argument is not even present in the Board’s decision but rather stems from a partial reading and interpretation of the decision by Vinicola Tombacco, based on the Board’s finding that the shape of the bottle under examination is commonly used in the wine market. According to the Court, the above does not constitute a finding of lack of distinctiveness, but a consideration that the particular shape is not one that would add substantial value to the goods (thus, creating an unfair monopoly over a design that would normally be protected under other IP rights)49. Moreover, the Court noted that this reference to lack of distinctiveness should be read within the framework of article 7(1)(e)(iii) EUTMR50 and that the Board’s intention was to explain how such lack of distinctive character would mean that the design cannot be “remarkable, outstanding, particular, easily recognisable” in order to give substantial value to the goods51. Regarding the second absolute ground for refusal invoked by ViTo, while the Court agreed that the bottle’s shape (the packaging of the goods) should be considered as the shape of the product, it found that the shape did not result from the nature of the goods (i.e. the liquid), as several other shapes could be used to contain the liquids in question. More specifically, the Court explained that liquids, such as wine, could not have a shape dictated by their nature, as they can be packaged in containers, whose shape can vary. The “collio” is a commonly used shape in the wine industry, but it is a commercial choice (based on the merchants’ practices and consumer habits) and not one imposed on producers52. The fact that this shape is commonly used for Prosecco and other sparkling wines does not mean the nature of the goods imposes it. The Court further rejected Vinicola Tombacco’s claim that the colour of the bottle is used to achieve the technical result of protecting the wine from oxidation and preserving its organoleptic qualities, highlighting that colour does not fall under article 7(1)(e), as applicable at the time when the trademarks were registered (as per the Court’s argumentation above). Turning to the last point of Vinicola Tombacco’s argumentation, that of a shape giving substantial value to the goods, the Court supported the Board’s 49 See supra note 46, §§ 34-37. 50 As applicable before the Trademark Reform, for the purposes of this case. 51 See supra note 46, § 37. 52 See supra note 46, § 46.
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