Golden oldies
Can anyone realistically claim exclusive trademark rights to a golden champagne bottle?
After all, gold is often used to enhance a product's upscale image. However, conflicts do arise from time to time, as we recently saw in an interesting case before the European Trademarks Office. The case concerned a shape mark consisting of a golden bottle from Sensi Vigne & ViniS.r.l., an Italian wine and champagne producer.
Maschio Beniamino S.r.l., a company producing wine and grappa, objected only after registration and filed a cancellation action.
The cancellation action was based on the following arguments:
These bottles cannot function as a trademark because their shape and color lack distinctiveness necessary to indicate origin. The shape and color do not sufficiently depart from the common forms and colors typically used for this type of bottle. The only distinctive elements are the labels displaying 'SENSI' and '18K'.
Because golden bottles have been on the market for a long time, the gold is likely to be regarded solely as a decorative element and unlikely as indicative of origin in the eyes of consumers. Moët bottles were cited as an example to support this argument.
It was an interesting case, even though the cancellation action did not stand much of a chance. It is clear why the European Trademarks Office initially approved the application. Contrary to the claims put forward by Maschio Beniamino, the mark does not consist merely of its shape and golden colour. The additional trademark elements − 'SENSI' and ‘18K’ − add distinctiveness.
This ‘trick’ of adding elements such as text to otherwise descriptive trademarks is often used to distinguish shape marks, as without them these marks would be difficult to register. Once a shape mark (with text elements) has been registered, the owner has a trademark. However, it is primarily the distinctive elements that are protected, not the more standard elements. This case is no exception, and it is likely that the bottle and golden colour are only protected to a very limited extent.
The cancellation action was denied on the ground that the text elements make the bottle distinctive as a whole. But if it’s a really useful trademark to have?
Author: Matthias Van Den Broek
Bio: Matthias van den Broek is a trademark attorney and specialist in advising in online brand protection and domain name disputes. His client portfolio includes well-known names in the financial sector, ranging from crypto startups to market makers. Matthias enjoys writing about current intellectual property issues, with an affinity for design law.