Chanel failed to register its No. 5 perfume bottle as a trademark in Lithuania

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.

Source: Neil Wilkof, Marijus Dingilevskis за IPKats

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Lithuania introduced some important changes in its trademark legislation

As of 01.01.2019, some important changes have been introduced in the trademark law in Lithuania, which adopt provisions from the EU Trademark Directive 2015/2436.  The most essential of them are:

• there is no more a requirement for graphical representation of a sign when it is applied for trademark protection;
• an opposition system was introduced which means that the Patent Office will make an examination on absolute grounds, and after that, every interested party can file an opposition based on earlier rights;
• certification marks are now possible for registration;
• invalidation and cancelation of trademarks will be done by the Patent Office, and not only by the Court as before.
• the trademark owner can stop goods labeled with his trademark to be transited across the country unless the person transporting the goods proves that the trademark owner is not entitled to prohibit the placing of those goods on the market in the country of final destination.
• the fees for registration of trademarks have been increased. For example, the fee for new trademark application goes up from 138 euro to 180 euro for one class of goods and services.

For more information here.

Source: Marques Class 46.