On instantaneous acquired distinctiveness... mistaken for inherent distinctiveness

Fabio Angelini

On Oct. 4, 2007 (even though the case was published only on Oct. 10, almost a week later), the ECJ has delivered another decision in regard to washing tablets. In Henkel v. OHIM, case C‑144/06, the ECJ has, once again refused to accept that the below washing tablet was distinctive enough to serve as a trademark. Nothing new under the sun. Same old arguments by Henkel, same old replies by the ECJ which, relying on an impressive string of uniform case law did not waste much paper (4 pages in all to sum up the parties arguments and deliver the judgement) in rejecting Henkel’s claims. Of course, is sad to see that while the ECJ courts have now consistently held the lack of distinctive character of such shapes, the Bundespatentgericht (German Federal Patent Court) has found that this mark is not devoid of distinctive character in relation to washing machine and dishwashing products. But nationalistic views are still hard to be overcome… Apart from German idiosyncrasies (in the most clinical sense of “a structural or behavioral characteristic peculiar to an individual or group”) hopefully, this is the last time that the ECJ is called to rule on washing tablets. In truth, there was an issue which would have been extremely interesting, had the ECJ ruled on it: whether the relevant date for the assessment of the distinctive character is the date on which the application for registration of the mark was filed, or the date of the judgment. The ECJ did not rule on it because Henkel did not substantiate its complaint with any detailed reasons why the Court of First Instance’s ruling on this question was wrong. However, it is worth to look at this issue. Henkel had alleged that it was the first company to present and market cleaning products in tablet form in the shape at issue. On the date on which the application for registration of the mark was filed, the public allegedly did not have the slightest difficulty in associating the product ‘dishwashing preparations and rinsing agents for laundry use in tablet form’ with its manufacturer, i.e. Henkel. Thus, the sign itself was capable of distinguishing goods and could serve as a trademark. The ECJ noted that the Court of First Instance had addressed that complaint in paragraphs 41 and 42 of the judgment under appeal, by stating that the inability of the mark applied for to indicate the product’s origin, was a priori and irrespective of the use made of it within the meaning of Article 7(3) of Regulation No 40/94, and thus could not be affected by how many similar tablets are/were already being marketed so that, under such circumstances, there was no need to take a view on the question as to the relevant moment to assess the distinctive character of the mark applied for. In my view, Henkel’s argument was interesting but misguided. It did not address the inherent distinctiveness of the sign (which was Henkel’s thesis), but rather its instantaneous acquired distinctiveness! Indeed, the phenomenon of an instantaneous acquired distinctiveness is more possible than it may seem. As Prof. McCarthy, the indisputable beacon of US trademark law, had rightly observed: “[C]oncurrent with the decreasing life span of a product and its trademark, is the increasing speed with which a new word can be injected into wide usage. With the advent of massive advertising campaigns on television and in national news magazines, a new trademark may achieve wide usage and “secondary meaning” within a matter of days or weeks, compared to the many years required in the days of more leisurely advertising” the fact that due to the novelty and the intense promotion that had accompanied the launch of the product in question, it is quite possible that almost immediately consumers began to associate these tablets with Henkel.

But would this fact, alone, confer distinctiveness to these tablets?

I’m unconvinced. Here the subject becomes more complicated, but I’ll try to keep it simple. it is a principle held by the ECJ several times, that the perception of the average consumer is not necessarily the same in relation to a three-dimensional mark consisting of the appearance of the product itself, as it is in relation to a word or figurative mark consisting of a sign which is independent of the appearance of the products it denotes. Since average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element, it is thus more difficult to establish distinctiveness, in the sense of recognizing in the shape “a trademark” in relation to such a three-dimensional mark than in relation to a word or figurative mark. Thus, it seems to me that even if consumers at first had associated the tablets (or certain colored tablets) with Henkel, it is questionable whether or not the consumers recognized the tablets as trademarks, absent clear and convincing evidence that Henkel presented these tablets as indicators of origins, i.e. trademarks. Which seems to confirm a theory of mine that acquired distinctiveness should not be proven by reference to consumers’ perception but rather the test for acquired distinctiveness is whether prior to filing of a trademark application, two conditions have been met: intent by the trademark owner to create a trademark and that the trademark owner has already actually accepted the commercial risks aimed to maintain or create a share in the market (i.e. have used the sign on the products and faced the competition). Of course, this is, for now, just a theoretical speculation, but maybe sometime along the path of future decisions, not the issue of whether the relevant date for the assessment of the distinctive character is the date on which the application for registration of the mark was filed, or the date of the judgment (by the way, in my view, and after the Levi v. Casucci decision, cf. Case C-145/05 of 27 April 2006, there is no doubt that the date is when the application was filed), but who is the relevant subject for the assessment of the distinctive character, will be finally answered.