SOBREFINA S.A.'S TRADE MARK APPLICATION

672 [No. 22] Sobrefina S.A. 's Trade Mark Application IN THE [1974] R.P.C. HIGH COURT OF JUSTICE-CHANCERY DIVISION Before: MR. JUSTICE WHITFORD 4th April, 1974 SOBREFINA S.A.'s TRADE MARK ApPLICATION Trade mark-Application-Three dimesional mark-Shape of beverage containerWhether a mark-Specimen tied to application form- Whether an appropriate representation of the mark-Application refused-Appeal dismissed. 5 Trade Marks Act, 1938, sections 9(1)(e), 10 and 68. An application for a registered trade mark was made on the prescribed form, and in the space headed "Representation of mark" there was tied with a piece of tape, a con- 10 tainer for beverages. At the foot of the form was the statement "The mark for which registration is sought consists in the shape or form of the accompanying representation, when applied to a container". The mark was applied for in respect of beer and other beverages. The applicant had previously secured protection for the container under the Registered Designs Act, 1949. Viewed from one angle the container appeared unusual, 15 but looked at from other angles it was commonplace. The hearing officer held that what was sought to be registered was not a "mark" within section 68 of the Act, since it was not something separate and distinct from an essential part of the goods themselves or their packaging; that it was difficult to regard as a trade mark something registered as a design, especially since registration as a trade mark would in effect prolong in- 20 definitely the monopoly in the design; that the container attached to the form was not an appropriate representation for the purposes of trade mark registration; and that, even if it was a mark, it was not prima facie, acceptable, under the provisions either ofsection 9(1)(e) or of section 10 of the Act. The applicant appealed. Held, dismissing the appeal, that although the fact that a device may be registrable 25 as a design does not prevent it being registered as a trade mark, what was sought to be registered was not appropriately represented for trade mark registration purposes, and the application should be rejected in its present form. Dictum of Sargant, L. J. in Charles Goodall & Son Ltd. v. John Waddington Ltd. (1924) 41 R.P.C. 658 at 668, considered. 30 Observed: "I think that for trade mark registration purposes it is probably always necessary that an applicant should be able to show a mark in two dimensions so that others will more readily know what they must not use in two dimensions, this being the general and customary form of trade mark usage .. . I think as a matter of discretion the Registrar is entitled to say, and indeed should say, that the shape or form of a 35 container may not be appropriately representedfor trade mark registration purposes by a [No. 22] Registrar 67:1 A -l/l7demea/h j1.er.Jjl2.ec!/ve VIeW - t -j)/qn - -..fide e/evariol1 on arrow A- 674 Mr. Nicholas Sobrefina S.A. 's Trade Mark Application [1974] R.P.C. specimen of the container itself. That is not to say . . . that upon an appropriate application with an appropriate form of representation something might not be registered which in one view at least might look something like the container affixed to form 2." This was an application No. 946094 by Sobrefina S.A. dated July 24th, 1969 to register a trade mark in class 32. On May 12th, 1966 there had been registered under the provisions of the Registered Designs Act 1949 a design No. 926319 in respect of "a bottle". A representation of that design is included in this report. On December 1, 1969 the registered design had been assigned to the present applicant. The remaining facts appear from the decisions. 5 Mr. F. W. G. Greener of Beck, Greener & Co. appeared for the applicant in the 10 Registry. Mr. Nicholas.-On 24th July 1969, Sobrefina S.A., a joint stock company organised in accordance with the laws of Switzerland, of rue St. Pierre 20, Fribourg, Switzerland, traders, applied for the registration of a trade mark in Part A of the Register in class 32 in respect of "Beer, ale and porter; non-alcoholic beverages and 15 preparations for making such beverages, all included in class 32". There was filed with the form of application (form TM No 2) as a representation of the mark a container in the shape of a bottle with a cap, the whole being made of plastics material, and having the lower portion enclosed in a cardboard cylindrical sleeve. At a later date, and after a hearing, the form TM No 2 was amended by the 20 agent to indicate that what is sought to be registered "consists in the shape or form of the accompanying representation, when applied to a container". A specimen of the container, the shape or form of which is sought to be registered as a mark, may be seen at the Trade Marks Registry of the Patent Office. Objection was taken to it on the ground that it was not a mark or a trade mark within the meaning of the definitions 25 contained in section 68 of the Act. After a hearing, the application was refused. I am now asked under section .17(4) of the Trade Marks Act 1938 and rule 35 of the Trade Marks Rules 1938 (as amended) to state in writing the grounds of my decision and the materials used in arriving at it. These are given below. The definitions of a mark and a trade mark in subsection (1) of section 68 of the 30 Act are as follows: "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof. "trade mark" means, except in relation to a certification trade mark, a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as 35 to indicate, a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the mark, whether with or without any indication of the identity of that person ... Further, section 68(2) reads as follows: "References in this Act to the use of a mark shall be construed as references to the use of a printed or other visual representation 40 of the mark, and references therein to the use of a mark in relation to goods shall be construed as references to the use thereof upon, or in physical or other relation to, goods". I have to consider, therefore, whether what is here sought to be registered falls within 675 [No. 22] Registrar Mr. Nicholas the definitions in the Act. The items within the definition of a mark referred to above are not exhaustive. The Act does not say that a "mark" must be one of these items, but the definition indicates in my opinion the nature of what may properly be described as a mark within the meaning of the Act. They are all in the nature of visual 5 symbols capable of being applied to goods or used in relation to goods and not either forming an essential part or, as in this instance, an essential physical concomitant of the goods. The shape of a three dimensional object may be represented by a perspective (...truncated)