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
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This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
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