Two recent European Court decisions (T-409/10 and T-410/10), involving the Italian fashion house, Bottega Veneta, give useful guidance as to the way in which a party should approach filing an application for a non-traditional mark, and also to the way in which a CTM applicant should consider dealing with any objections raised.
On 1 February 2008, Bottega Veneta filed three Community Trade Mark applications (CTM 6632624, CTM 6632566 and CTM 6632608) for marks consisting of the shapes of purses and handbags. Two of those were rejected, and the third (CTM 6632624) sailed through to registration, without an objection being raised, by the end of the same year. What was it, then, that held up two of the applications, and, indeed, continues to prevent them from being registered, when the third of the trio encountered no difficulties?
The rejected marks each consisted of applications for the shape of handbags. These were referred to as the "tote" and the "hobo" bags by the Applicant. The bags did not appear to be hugely original and, unsurprisingly, OHIM refused their registration on the basis of Article 7(1)(b) of the CTM Regulation (CTMR), that is, the marks were devoid of distinctive character.
Bottega Veneta appealed and filed two different strands of argument to overcome the objection. Firstly, it argued that the marks were distinctive, but interestingly backed this up by saying that its original representations were defective and filed new representations to replace them. It then argued that the "plaited surface", clearly visible on the new representations, but not on the original filings, was distinctive and that the applications should therefore be accepted on that basis. Alternatively, Bottega Veneta argued that its marks had acquired distinctiveness through use and thus should be accepted on the back of that use.
The Board of Appeal, and then the General Court, rejected Bottega Veneta's arguments. No objection had been made to the quality of the representations of the handbags by the OHIM examiner, in the first instance, and so it was not open to Bottega Veneta to decide, later in the proceedings, that its own representations were retrospectively defective. As the new representations, bearing the "plaited surface," could not be accepted, the argument relating to the distinctive character of that plaited surface could not apply. On a consideration of Bottega Veneta's evidence of acquired distinctiveness, both the Board and the Court found that the vast majority of the evidence related to the plaited surface of the bags, and not to the shape of the bags being distinctive. The appeals were therefore dismissed and the applications were refused.
Where did Bottega Veneta go wrong? Even if the handbags were not hugely distinctive inherently, could registrations have been obtained? We turn now to the third application (CTM 6632624), also for the shape of a purse/bag, and covering "purses and handbags", which was registered with no difficulties.
Unlike the two refused applications, the third, accepted CTM application contains a description, which reads "A pochette bag with a rigid structure distinguished by an original fastener in the shape of a knot and by a covering of interlaced textile or animal skin with a 45 degree angle to the base of the bag". This seems to go to the heart of Bottega Veneta's claims in its other two cases, that the "interlaced textile or animal skin", or "plaited surface" was, in fact, a distinguishing factor in the bags themselves, and was to be considered an important feature. Why didn't Bottega Veneta include a similar description in the CTM applications for the two refused bags? Indeed, the General Court comments "The Appellant, in its application, has filed no description of the mark applied for, and has therefore deprived itself of a means of ensuring .... that the exact coverage of the application mirrored its intention at the time of filing the application".
Lesson 1, therefore, must be that applicants wishing to protect unusual marks should consider, before filing, exactly what it is that they wish to protect and ensure that the application is worded accordingly. The accepted mark does not appear particularly distinctive, and, in fact, is more than somewhat reminiscent of a purse and spectacle case combination owned by this writer's maternal grandmother. However, the description seems to have been sufficient to help the application proceed to registration.
Even if Bottega Veneta should have considered filing a description with its refused CTM applications, it clearly did not, and so consideration should be given as to the quality of evidence that was filed to support the claims of acquired distinctiveness.
As is well known, filing evidence of acquired distinctiveness, to overcome objections to CTM applications for device or shape marks, is a hugely onerous exercise. Bottega Veneta was clearly facing a difficult task. However, it did not help itself in any way by filing evidence which did not show acquired distinctiveness of the bags themselves, but rather of the "plaited surface". Unsurprisingly, given that the evidence showed little use of the bags, it was rejected.
Lesson 2, therefore, starts from where Lesson 1 finishes. A CTM applicant must always consider what it is trying to protect and what is needed to do that. In the first instance, the Applicant was clearly trying to protect the outward appearance of handbags, with a plaited surface. However, no reference was made to this. Thereafter, rather than filing evidence relating to the shape of the bags in question (which were, after all, the focus of the refused CTM applications), the applicant instead concentrated on the plaited surface of the bags which was not graphically represented in an adequate manner in the representations filed.
These cases show that continuing focus on the case in hand is vital, rather than allowing attention to drift. The existence of Bottega Veneta's third, accepted application shows that such focus can reap rewards.