Wine Law

12 words, design features should be subject to design law, not trademark law (and its benefits). There is a public interest in “ ensuring that natural, functional, or ornamental shapes may be freely used by all ” 34 . It must be noted that not all absolute grounds have the same effect to the applicant – while article 7(1)(b) can be overcome by proof of acquired distinctiveness, that is not the case with point (e). More specifically, even if a sign is considered “devoid of distinctiveness” – thus falling under the respective absolute ground for refusal –, the applicant may still argue that the sign’s “acquired distinctiveness” applied for as a trademark based on criteria laid out by the CJEU in Nestlé v Mars 35 : a) the market share held by the mark; b) how intensive, geographically widespread and long-standing the use of the mark has been; c) the amount invested by the undertaking in promoting the mark; d) the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and e) statements from chambers of commerce and industry or other trade and professional associations. Contrary to article 7(1)(b), point (e) is, in fact, one of the few exclusions that cannot be overcome by evidence that the sign indeed functions as a trademark, thus indicating origin 36 . Practically, this means that even if the applicant can present evidence of acquired distinctiveness, a sign consisting exclusively of a shape which falls under article 7(1)(e) will not be registered. Conversely, all other shapes not explicitly listed in the absolute grounds can be subject to trademark protection, provided, however, that they meet the distinctiveness threshold required for the registration of a trademark ( distinctive character ). Given that shapes can be inherently distinctive in very limited circumstances, applicants will be required to submit considerable evidence of acquired 34 A. Folliard-Mongurial, Distinctive Character Acquired Through Use: The Law and The Case Law , in TRADE MARK USE 409 (Jeremy Phillips & Ilanah Simon eds., 2005). 35 Judgement of the Court (Second Chamber) 7 July 2005 In Case C-353/03, Société des produits Nestlé SA v Mars UK Ltd. 36 I. Fhima, Functionality in Europe: When do trademarks achieve a technical result? The Trademark Reporter May-June, 2020 Vol. 110 No. 3, p. 663.