One interesting case from Lithuania shows how difficult registration of 3D trademarks can be.
Chanel filed сх 2014 a trademark application for their No. 5 perfume bottle in class 3 – perfumes:
Although the same sign was a successfully registered trademark in many other countries, that was not the case for Lithuania where the local Patent Office refused it based on absolute grounds – lack of distinctiveness.
The decision had been appealed several times before reaching the Supreme Court.
The Court considered the sign as three-dimensional and confirmed the lack of distinctive character. The EU Court practice was cited, according to which consumers don’t usually associate the shape of packaging with the origin of a product. Because of this more solid arguments and evidence are necessary in order for such signs to become valid trademarks.
In the case at hand, the Court found the submitted packaging as not diverging from what is customary for these types of products. Many other similar packagings were existing on the market so consumers would not perceive the sign applied for as a source of a particular trade origin.
Based on this the Court concluded that Chanel’s perfume bottle lacks inherent distinctiveness.
In regard to the evidence for acquired distinctiveness through market use, the Court dismissed them as insufficient.
The consumer survey offered by Channel targeted only France but not Lithuania. This was crucial for the Court which found the rest of the evidence, such as marketing data and materials, as insufficient for proving a distinctive character for a three-dimensional mark for packaging.
This case comes to shows again how difficult registration of such trademarks can be for every applicant even for a big company like Chanel. A good IP strategy is necessary way before applying for a trademark which to target all possible scenarios and to secure adequate facts and figures supporting the existence of distinctive character.