A recent Benelux Court of Justice judgment provides an opportunity to discuss a recurring trade mark question: when can an apparently simple visual element, such as a red circle or sphere with shading, function as a mark? The case between German multinational Henkel and British-Dutch multinational Reckitt, both owners of numerous consumer brands, concerned precisely such a sign: essentially a red sphere or circle with a glossy, almost three-dimensional appearance. You have probably seen similar elements on dishwasher tablet packaging in supermarket aisles. They look recognisable—but are they recognisable as an indication of origin capable of being monopolised as a trade mark, here for dishwasher tablets? Or do they remain primarily packaging decoration?
The Benelux Court of Justice’s judgment of 2 June emphasises that trade mark law starts from a different point than marketing: the central question is not whether something stands out, but whether it indicates the product’s origin to consumers. Another relevant question is whether distinctiveness must always be inherent or can develop over time. This article addresses those questions through the judgment.
The essence: distinctive character
Every trade mark’s essential function is to enable consumers to identify the undertaking from which goods or services originate. The assessment therefore centres on the average consumer’s perception.
That assessment must be concrete and may consider normal conditions of use. Relevant questions include how and where the sign appears on the goods or packaging, how it presents on the shelf and how consumers perceive it in that context. But a concrete assessment does not mean everything always counts. Arguments about the length and intensity of use generally do not belong in the assessment of inherent distinctiveness.
Simple geometric shapes present an obvious risk: consumers are accustomed to circles, spheres, dots and areas of colour on packaging serving as design accents, cues suggesting power or simply attention-grabbers. Their initial interpretation will generally be decoration.
The judgment illustrates how market context shapes consumer perception. In markets where packaging frequently uses dots, circles, spheres, bright colours and glossy effects, consumers become accustomed to viewing these as decorative. That affects expectations: where the sector normalises such shapes as packaging design, it becomes harder to argue that an individual red sphere is immediately perceived as a trade mark.
The context may also extend beyond a narrow product category. Consumer perceptions are influenced by what they see in adjacent categories, for example the wider cleaning or personal-care market. Anyone seeking to monopolise a simple sign must therefore almost always first confront the reality of sector conventions.
Reckitt ultimately failed at the basic threshold: the sign was not perceived as an inherently distinctive trade mark, but as a decorative element. The Court found that it did not enable consumers to distinguish the relevant goods by origin. This aligned with the Benelux Office’s decision, which had already invalidated the registration because the relevant public would perceive the shaded red circle or sphere as decoration rather than an indication of origin.
Acquired distinctiveness
Such signs can acquire trade mark significance, but the legal route is then not “this is inherently distinctive”; it is “this has become distinctive through use”, also known as acquired distinctiveness. Surprisingly, however, acquired distinctiveness was not relied on in this case.
Acquired distinctiveness means that a sign initially insufficiently distinctive for trade mark registration becomes recognised by the relevant public as an indication of origin through prolonged and intensive use. Consumers no longer see it merely as decoration, shape, colour or description, but understand that it refers to a particular undertaking. Relevant evidence includes market surveys, turnover and sales figures, advertising expenditure, the duration and geographical extent of use, and media coverage. The simpler or more decorative the sign, the greater the evidential burden generally is to establish that the public has actually come to see it as a mark. A simple, attractive packaging element may therefore have commercial value without automatically being a trade mark. The central question remains whether consumers perceive an indication of origin—and thus a mark—or mainly decoration, marketing or aesthetics. Anyone seeking lasting protection should consider a consistent trade mark strategy and evidence of distinctiveness through use in good time. Do you have questions about trade mark law, or would you like to discuss protection of packaging, designs or other signs? Please contact Guldemond Advocaten.
