Bongrain SA, Re Trade Mark Application

A product shape does not possess inherent distinctive character merely because it is unusual, striking or memorable. The decisive question is whether the average consumer would perceive the shape, without prior education through use, as indicating the goods’ trade origin.

The statutory grounds of refusal require separate examination, but their scope may overlap. Public interest in keeping signs available is not confined to colour marks, and a shape’s apparent function may be relevant both to descriptiveness and to distinctive character. A shape may acquire distinctiveness through use, but the evidence must show that consumers rely on it as a guarantee of origin at the application date.

Bongrain SA applied to register, for cheese, a series of two three-dimensional trade marks consisting of the shape of a segmented cheese. The application sought protection irrespective of colour, wrapping or labels.

The Registrar’s hearing officer refused the application. Pumfrey J upheld that refusal in the Chancery Division: [2003] EWHC 531(Ch). Bongrain appealed, contending that the shape was inherently distinctive because it was strikingly unusual, or alternatively that it had acquired distinctive character through use.

The central issue was whether the shapes met the distinctive-character requirement under Directive 89/104/EEC.

1. Appeal dismissed. Jacob LJ, with whom Longmore and Potter LJJ agreed, held that the Registrar and Pumfrey J had applied the correct test and that neither the inherent character of the shapes nor the evidence of use justified registration.
2. Under Article 3(1)(b) of Directive 89/104/EEC, distinctive character depends upon whether the mark identifies the goods as originating from one undertaking and distinguishes them from those of others. The assessment is made by reference to the goods and to the presumed expectations of the reasonably informed, observant and circumspect average consumer. The legal test is the same for every category of mark: see Linde [2003] RPC 45.
3. In practice, consumers are not generally accustomed to treating the shape of the product itself as an indication of origin. A significant departure from sectoral norms may be capable of performing that function, but it does not inevitably do so. A fancy shape is therefore not, without more, inherently distinctive. The relevant cheese shapes would be recognised, at most, as shapes of cheese previously encountered; absent established consumer recognition, they would not provide a guarantee of trade origin.
4. The public interest in preserving signs for traders’ use was not a freestanding colour-mark rule. It could inform the assessment under Article 3(1)(b) and Article 3(1)(c). Although the Article 3 grounds are independent and require separate examination, their scope may overlap. Thus, a consumer perception that a shape serves a cutting function could be relevant to both provisions.
5. The Article 3(3) evidence was valueless. It concerned a similar but different cheese shape, showed limited use, and included guesses and unsupported trade opinions rather than proof that consumers treated the applied-for shape as a badge of origin at the application date. The application was accordingly refused.

• Court of Appeal (Civil Division) Dismissed Bongrain SA’s appeal and affirmed the refusal of registration: [2004] EWCA Civ 1690.
• High Court of Justice (Chancery Division) Pumfrey J upheld the Registrar’s refusal: [2003] EWHC 531(Ch).
• Registrar of Trade Marks The hearing officer refused trade mark application No 2134604.