Wine Law

16 both trademarks, on the ground that the shape of the bottle resulted from the nature of the goods, thus violating article 7(1)(e)(i) EUTMR. Vinicola Tombacco further supported that 41 :  the bottle’s aesthetic appearance only justified limited time protection, which is a matter for design protection, as opposed to the potentially unlimited protection afforded by trademark law;  the bottle’s shape is commonly used to bottle the Prosecco DOC wines, with the choice of gold colour reflecting this type of wines; and  the shape and colour of the bottle do not differ from the standards of the wine sector. It is worth noting that Vinicola Tombacco’s argumentation is, in practice, based on more than one absolute grounds for refusal – and not just article 7(1)(e)(i) EUTMR, whereby the shape results from the nature of the goods. More specifically, by arguing that the shape and colour of the bottle do not deviate from the wine sector’s norms, the company invoked article 7(1)(b) EUTMR and the ground that the sign is devoid of any distinctive character. Furthermore, the reference to the bottle’s design leads us to article 7(1)(e)(iii) EUTMR and the absolute ground according to which a sign cannot be registered as a trademark if it consists exclusively of the shape, or another characteristic, which gives substantial value to the goods. This provision is considered by many as the European equivalent of the US “aesthetic functionality doctrine”, according to which when goods are bought mostly for their aesthetic value, their features may be functional because they definitely contribute to that value and thus aid the performance of an object for which the goods are intended. The determination of whether such features are functional depends upon the question of whether the prohibition of imitation by others will deprive the others of something that will substantially hinder them in competition 42 . 41 Can you trademark the shape of a wine bottle ? https://www.novagraaf.com/nl/node/907, last accessed on 19 November 2020. 42 Restatement (First) Of Torts § 742 (1938) § 742, cmt. a.