Court refuses trademark registration of three-dimensional packaging

In Ein Gedi Cosmetics Ltd v Registrar of Trademarks (Civil Appeal 3776/06, May 12 2008) the Supreme Court rejected the appeal of a decision of the registrar of trademarks to refuse the registration of three-dimensional packaging and a product shape as trademarks.

The registrar refused the application of a cosmetics manufacturer to register the shape of three objects: 

• a candle (a wax-filled jug); 
• rectangular packaging for a perfume bottle with openings in the form of arched windows; and 
• rectangular packaging for a perfume bottle with openings in the form of flapping doors through which the bottle may be seen.

Registration for the packaging had also been sought and refused in the United States.

Applying the rule that for a mark to be registrable it should possess inherent distinctiveness or should have acquired distinctiveness, the registrar held that the marks were not inherently distinctive. He held that the candle shape was standard and the packaging had no significant design elements. He further found that the applicant failed to prove acquired distinctiveness demonstrable through market surveys, which would show that the product shape or packaging had come to be identified with the source of the goods in the minds of consumers. The registrar noted that the marks contained functional and aesthetic features which should not be excluded from public use and concluded that the applicant sought trademark registration in an attempt to circumvent the ineligibility of product shapes and packaging for industrial design protection.

On appeal, the appellant argued that its marks were inherently distinctive and/or had acquired distinctiveness, and that given the many available design alternatives, registration of the marks would not deprive its competitors or the public of any functional features. The appellant further argued that the marks could have been registered subject to reservations.

The Supreme Court reiterated the statutory requirement that trademarks be distinctive, given that the objective of trademark registration is to preserve the identification of goods with their source. Confirming that in general marks may be three-dimensional, provided that the distinctiveness requirement is met, the court made reference to its earlier Toffifee ruling that a product shape is registrable only based on acquired distinctiveness and not as inherently distinctive. The court noted that functional features – whether useful or aesthetic – cannot be registered as inherently distinctive even if they may identify the source, and confirmed that functional features have no protection under the passing-off rules. While the Supreme Court's ruling in the Kalil precedent suggested that a functional mark may be registered based on acquired distinctiveness, the Toffifee rule excludes any functional or aesthetic three-dimensional product shape from registration. Rather, the registration of a product shape is subject to showing that the product shape actually serves to distinguish the product and has no functional or aesthetic role.

With regard to product shape, the Supreme Court refused to interfere with the registrar's finding that the appellant had failed to show acquired distinctiveness, which was demonstrable by information such as: 

• the duration of use of a mark; 
• the nature and scope of publicity; and 
• the manufacturer's efforts to create a consumer association between the mark and the products.

The court further agreed with the registrar on the merits, noting that as stronger evidence is required for less unique products, the fact that the appellant's candle lacked unique elements imposed a heavy burden of proof on the appellant, which it failed to meet.

Noting the difficulty of classifying the other two marks as packaging rather than product shapes, the Supreme Court left unresolved the question of whether the criteria for packaging and for product shape should be different. Refusing to interfere with the registrar's factual finding that the propounded marks have neither inherent nor acquired distinctiveness, the court noted that the packaging design was standard and lacked unique elements, and thus the marks were not inherently distinctive; nor did the appellant meet the heavier burden of showing acquired distinctiveness for non-unique designs.