Bacardi & Company Limited: How distinctive are you?

The household named spirit brand appeals the EUIPO’s refusal to register it’s EU trade mark due to lack of distinctiveness. In the appeal, the importance of whether a trade mark serves the basic function of enabling consumers to identify the origins of their products is discussed.

The famous family owned spirits company has been successful in its application to register a figurative sign (a graphic mark) as an EU trade mark (the shape of the Bacardi bottle). It had originally applied to register its 3D graphic mark in December 2017, but the EUPIO examiner had refused the registration due to a lack of distinctiveness.

The grounds for lack of distinctiveness

Section 7 (1) (b) of the EU Trade Mark Regulation (‘EUTMR’) states that a trade mark shall not be registered if it ‘…devoid of any distinctive character’.  The original EUIPO examiner held that even though the sign was considered a figurative mark, it related to the presentation of the product itself, thus it had to comply with the case law on 3D signs.

The EUIPO examiner did not consider the intricate details of the products design e.g. the shape of the bottle, its green colour, the label with ornaments consisting of a badge of an ancient noble family as distinguishing the Bacardi & Company Limited’s (‘Bacardi’s’) from the industry standards. Understandably, Bacardi argued that there is an elevated level of detail that is incorporated into the design of alcoholic products as consumers look for these details to identify their products. Arguably, Bacardi felt that the EUIPO examiner had failed to appreciate the importance of these graphic elements and erred in its lack of finding of distinctiveness.

Appeal to the EUIPO

On appeal to the EUIPO Fourth Board of Appeal (‘the Board’), it was considered whether the various elements that were depicted on Bacardi’s bottle could be considered distinctive when viewed together.

The Board found that the more closely the shape of a mark to be registered resembles the shape of the product of the mark or its packaging, the more likely that the mark will be devoid of any distinctive character for the purposes of Article 7(1)(b) EUTMR. However, Bacardi were not attempting to state that the shape of their bottle was distinctive, but rather the figurative mark (EU trade mark) incorporated some elements that gave it distinctiveness.

The Board reiterated that the purpose of a trade mark is to enable the consumer to identify the origins of a product and enable them to communicate any positive or negative experiences. As a result, the Board held that an average consumer, having reviewed the graphic mark, would be able to identify the origins of the product. Consequently, it was decided that although various alcoholic beverages brand use similar decorative components to design their products, Bacardi’s EU trade mark incorporated elements that when reviewed in their entirety gives the product distinctiveness.

By Fatima Amedu