Publications > Proctor & Gamble’s mark is washed out

The Procter & Gamble Company v OHIM. Judgment of the CFI. Joined cases T-241/05, T-262/05 to T-264/05, T- 346/05, T-347/05, T-29/06 to T-31/06. 23 May 2007

Once again, the European Court has made it tough for Procter & Gamble to trade mark its washing tablets.

Just over three years ago the ECJ rejected Procter & Gamble’s appeals against the CFI to allow registration of the three dimensional shapes of a square tablet with inlay, and rectangular tablet with inlay, for soaps and detergents in class 3 (combined case C-473-01 & C-474/01, 29 April 2004). The grounds were lack of distinctiveness as per Article 7(1)(b) of the Regulation No 40/94. In this instance, which is an appeal to the CFI against seven decisions of the Board of Appeal upholding the refusal of seven applications, the ECJ judgment was made to haunt the appellants.

The marks for which registration was sought (back in May 2000, seven years ago!), were three dimensional shapes in the form of a square white tablet with seven varieties of floral designs and colours. These were combinations of the colours green, blue and lilac and designs of four, five or six petals. The goods, in International Class 3, were ‘washing and bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; preparations for the washing, cleaning and care of dishes; soaps’.

The applicants, now the appellants, argued that the tablets were unique in the market place and that daily shoppers had a high level of attention when choosing detergent products, especially the more expensive kind. They also argued that, although the mark was also the product, it was quite feasible that its packaging might take the same shape and appearance as the product itself, or the product be depicted on the packaging or even sold in transparent packaging (in response to the Board of Appeal’s argument that these types of goods are generally sold in packaging bearing a number of verbal or figurative features). They also tried to argue that the design and colour features fulfilled the requirements of the ‘square tablet with inlay’ and ‘rectangular tablet with inlay’ cases, namely that they constituted ‘an additional and distinctive feature’.

The CFI, unfortunately for Procter & Gamble, did not think this was a clean and persuasive set of arguments. The court was unpersuaded in the absence of clear evidence, that soap detergent consumers were any other than average consumers whose level of attention for these everyday goods was not high. Quoting the previous ECJ decision, the CFI noted that, although the criteria for assessing the distinctive character of 3-D trade marks consisting of the product itself are no different from those applicable to other categories of trade mark, “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 and it could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark” (Procter & Gamble v OHIM par. 36).

Regarding the appellant’s other arguments, especially what it said about packaging, the CFI noted that ‘normal marketing practices’ should be taken into account and that particular marketing concepts [such as using transparent packaging] cannot have any bearing on the assessment of a sign’s registrability.

As for the argument that the colours and petal designs add distinctiveness, the court answered that adding a coloured inlay to the upper face of a washing preparation tablet is ‘an obvious way of combining various active ingredients’ (quoting the 2004 ECJ judgment against Procter & Gamble, once again). Neither were the petal designs anything other than variations on a basic geometrical theme, so unable to have a significant impact on consumers’ perceptions. They would not therefore indicate anything other than an inlay announcing the presence of another active ingredient. Nor does the fact that there is currently no other identical product on the market (i.e. that it is ‘unique’) make up for lack of distinctiveness in a trade mark sense.

Having washed away the appellant’s arguments, the appeal action was dismissed.

Comment:

One has to admire Procter & Gamble for their tenacity in trying at all costs (and considerable legal cost) to unbind the negative decisions of lower authorities in order to follow in the footsteps of, say, Unilever, who have been successful in registering a three dimensional square soap tablet with an overlaying three-dimensional S- figure - CTM No 1860170. Given the highly competitive and lucrative soap and detergent market, it is hardly surprising that Procter & Gamble have fought tooth and nail to try to get a commercial advantage in the form of a trade mark monopoly for their products. But why have they seemingly not learnt from their previous failed attempts? Possibly (at a guess), because the ECJ decision came four years after they first filed the applications behind this particular set of cases that have only just been heard. What would be surprising, then, is if they further appealed. Also, if they did not take a serious look at how best to emulate the likes of Unilever in future product development. If they want a three-dimensional soap tablet trade mark registration, that is.

This article first appeared in the July/August 2007 issue of the ITMA Review