An often neglected area during the filing of a Trademark application is the filing of evidence to prove the use and the secondary meaning (if any) associated with the mark in the minds of the public. The evidence filed should be exhaustive, conclusive and convincing, if these elements are absent it could cost a proprietor the registration of such mark.
A non-alcoholic beverage giant like Coca-Cola too made the error of filing flimsy evidence before the OHIM and Board of Appeals when claiming that its 'contour bottle with fluting' had acquired a distinctive character through its usage. The flaws in their evidence were apparent for instance, though the application had been filed for registration throughout EU (via OHIM), the survey showing association of the shape mark, exclusively with Coca-Cola, in the minds of the public was conducted only in 10 member states. Therefore, the survey was not conclusive and did not lead to the inference that in all member countries, the masses associated the shape of the bottle with Coca-Cola alone. Further, instead of employing the services of a known market research company, Coca-Cola hired its erstwhile director to conduct the research hence; questions were raised on the reliability of the results submitted. Also, the surveys submitted contained leading questions and the data submitted as turnover, sale volume figures was inclusive of Coca-Cola's other brands as well (Fanta, Fresca, Minute Maid etc.) The Board of Appeals also pointed out that the advertisements submitted did not exclusively refer to the mark applied for but also other bottles and cans as well and specifically the contour bottle with fluting. The Board opined that the public's perception of shape mark could be different from that of verbal marks.
In light of the abovementioned defects the Board of Appeals rejected Coca-Cola's application for registration of shape mark. This case is a lesson for proprietors to not take evidence submission as a trivial issue; the evidence submitted does not have to be voluminous but reliable so as to establish the distinctiveness of the mark thereby proving registerablity of the mark.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
