A recent ruling by the Benelux Court of Justice provides a good opportunity to discuss a common question in trade mark law: when can an apparently simple figurative element — such as a red circle or sphere with shadow effects — function as a trade mark? The case between two multinationals with numerous consumer brands – the German company Henkel and the British-Dutch company Reckitt – centred precisely on such a sign: essentially a red sphere or circle with a glossy, almost 3D-like appearance. You have no doubt seen this sort of ‘element’ on the packaging of dishwasher tablets on supermarket shelves. It looks recognisable — but is it also recognisable as an indication of origin that you can monopolise as a trademark for, in this case, dishwasher tablets? Or does it remain primarily packaging decoration?
The ruling of the Benelux Court of Justice of 2 June this year emphasises, above all, that trade mark law has a different starting point from marketing: the central issue is not whether something stands out, but whether it indicates the origin of the product to the consumer. Another important consideration is whether a trade mark must always possess intrinsic distinctiveness, or whether this can also arise over time. In this blog post, I will address these questions in the light of this ruling.
The essence: Distinctiveness
The essence of any brand is that it enables the consumer to identify the company from which the goods or services originate. The test therefore centres on the perception of the average consumer.
That assessment must be specific and may take into account the circumstances of normal use. Consider questions such as: how and where is the sign displayed on the goods or packaging, how does it stand out on the shelf, and how does the consumer perceive it in that context? However, ‘specific’ does not mean that every factor is always taken into account. Arguments regarding how long and how intensively an element has already been used are generally irrelevant to the question of whether the sign is intrinsically distinctive.
With simple geometric shapes, the risk is obvious: consumers are used to circles, spheres, dots and coloured areas on packaging being used primarily as design accents, as ‘power cues’ or simply to attract attention. The first interpretation is therefore usually: decoration.
What this ruling clearly illustrates is that market context shapes consumer perception. In markets where packaging frequently features dots, circles or spheres, bright colour accents and glossy effects, consumers become accustomed to viewing such elements as decorative. This affects patterns of expectation: if the ‘genre’ normalises these kinds of shapes as a packaging language, it becomes more difficult to argue that an individual red sphere is automatically perceived as a trademark.
Moreover, that context may extend beyond a single, narrow product category. Consumers’ perceptions are partly shaped by what they see in related categories, for example within the wider cleaning or personal care market. Anyone wishing to monopolise a simple symbol must therefore almost always first come to terms with the reality of industry conventions.
In this case, Reckitt ultimately failed to meet the basic threshold: the sign was not regarded as an intrinsically distinctive trade mark, but as a decorative element. According to the Court, the sign does not enable consumers to distinguish the goods in question by their origin. In so doing, the Court concurs with the decision of the Benelux Office, which had already declared the registration invalid on the grounds that the relevant public would perceive the red circle/sphere with shadow effects not as an indication of origin, but as a decorative element.
Integration
Signs of this kind can indeed acquire brand value, but the legal argument in such cases is not that ‘this is inherently distinctive’, but rather that ‘this has become distinctive through use’ (also known as ‘acquired distinctiveness’). However, (strangely enough) no claim of acquired distinctiveness was made in this case.
Acquisition of distinctiveness means that a sign which was initially not distinctive enough to be registered as a trade mark comes to be recognised by the relevant public as an indication of origin through prolonged and intensive use. In other words, consumers no longer view the sign merely as decoration, a shape, a colour or a description, but understand that it refers to one specific undertaking. Consider evidence such as market research, turnover and sales figures, advertising expenditure, the duration and geographical scope of use, and media coverage. The simpler or more decorative the sign, the greater the burden of proof is generally required to demonstrate that the public has actually come to regard it as a trade mark. In short: a simple and attractive element on packaging may be commercially valuable, but that does not automatically make it a trade mark. The key question remains whether consumers view the sign as an indication of origin – and thus as a trade mark – or primarily as decoration, marketing or an aesthetic feature. Anyone wishing to protect such an element in the long term would therefore be well advised to give timely consideration to a consistent trade mark strategy and to build distinctive character through use. Do you have any questions about trade mark law, or would you like to discuss the protection of packaging, design or other signs? Please feel free to contact Guldemond Advocaten.
