Shape is what matters in case of a yoghurt container

In invalidity proceedings before OHIM the Board of Appeal overruled a decision by the Invalidity Division rejecting a request for declaration of invalidity against a Community Design registration (“CDR”) for a yoghurt container based on the colorful lid and label it contained compared with the earlier design.

On 10 October 2014 the Board of Appeal at the Office for Harmonization in the Internal Market (“OHIM”) had to decide on the appeal against a decision by the Invalidity Division rejected an application for invalidity of a CDR for a yoghurt container design comprising a colorful lid and brand labels based on an earlier plain white yoghurt container design without lid (Case R 1682/2012-3).

The shape of the dual container yoghurt pots to be compared was quite similar, but the earlier design did not contain any colorful lid or labels like the attacked CDR.

The Board of Appeal upheld the appeal and annulled the contested decision. It held that the earlier design consisting of a plain white dual container yoghurt pot, as disclosed by the applicant’s earlier International trademark registration, led to a lack of individual character of the attacked CDR.

The Board of Appeal underlined in its decision the considerable degree of freedom of designers in the field of dual container yoghurt pots, as evidenced by the different designs of these containers shown in the applicant’s submission to OHIM.

As the shape of the containers was according to the Board of Appeal very similar, it went on to examine whether the colors used on the lid and side labels of the attacked CDR would leave an imprint on the informed user, in this case dairy producers as well as end users.

It argued that dairy producers would focus primarily on the shape and dimensions of the container itself, as they would usually buy blank containers, fill them and seal them with lids branded with different marks / logos. The way in which the attacked CDR was filed, namely not as a trademark or as an ornamental design, would support the finding that the shape of the container was of primary importance.

Also for the end user, it was according to the Board of Appeal the shape of the container that would count. The end consumer would see the graphic features as a trademark rather than as a design and was accustomed to seeing trademarks and logos in its everyday life.

Accordingly, for all informed users the shape of the design would largely dictate the overall impression. An overprotection of graphical features in the nature of trademark rights could lead to illogical and unjust results.

Bearing in mind the quite wide freedom of the designer and the predominance of the shape of the container, the Board of Appeal therefore concluded that the designs convey substantially the same overall impression on the informed user leading to a lack of individual character of the attacked design.