Selected CJEU judgments on the registration of shape trademarks

Gordon HUMPHREYS

Chairperson of the 5th Board of Appeal, EUIPO

21/06/2016

General rule of registrability

Art. 2 TMD

(Art. 4 EUTMR)

‘The shape of goods or their packaging’

INTRODUCTION

Art. 3(1)(b) TMD (Art. 7(1)(b) EUTMR) devoid of distinctive character

But sometimes acquired distinctiveness throughout the EU (Art. 3(3) TMD, Art. 7(3) EUTMR) – e.g., Coca Cola

Significant portion of relevant public recognises shape mark and associates it with applicant’s goods : Philips v Remington, C-299/99

TWO TRADITIONAL OBJECTIONS: (cont.)

However, average consumers do not normally make assumptions about product origin on the basis of shape alone and it could therefore prove more difficult to establish distinctiveness in relation to a 3-D mark. Mag Instruments v EUIPO,C-136/02P

Possibility of showing significant departure of shape from norms or customs of the sector.

Henkel v EUIPO (‘Tabs’),C-144/06

TWO TRADITIONAL OBJECTIONS: (cont.)

Art. 3(1)(e) TMD (Art. 7(1)(e) EUTMR) devoid of

distinctive character

Cannot be cured by acquired distinctiveness

Lego Juris A/S v EUIPO, C-48/09 P

TWO TRADITIONAL OBJECTIONS: (cont.)

A sign will be refused or invalidated where it consists exclusively of:

(i) the shape, or another characteristic, which results from the nature of the goods themselves; [nature]

(ii) the shape of goods, or another characteristic, which is necessary to obtain a technical result; [function]

(iii) the shape, or another characteristic, which gives substantial value to the goods. [aesthetic value]

Art. 3(1)e TMD (Art. 7(1)e EUTMR)

Philips v Remington, C-299/99

Must be shown that ‘essential functional features’ of the shape ‘attributable only to the technical result’

Cannot overcome objection by showing that other shapes exist which allow the same technical result to be obtained.

Art. 3(1)e (ii) TMD

Lego v EUIPO, C-48/09

Granting a monopoly on a shape ‘would unduly impair the opportunity for competitors to place on the market goods whose shapes incorporate the same technical solution’

It is for national courts to identify the essential characteristics of the shape.

Art. 3(1)e (ii) TMD

Dutch Supreme Court made a preliminary reference to the CJEU on the interpretation of Article 3(1)(e)(i) and (iii) TMD.

Judgment of 18 September 2014 in Case C-205/13, Hauck GmbH & Co. KG v Stokke A/S et al. –

TRIPP-TRAPP

Art. 3(1)(e) TMD applies to signs that

→ Consist exclusively of the shape of a product;

→ have one or more essential characteristics that are inherent to the generic function or functions of that product;

→ those essentials characteristics are ones that consumers may look for in competitors’ products.

Judgment of 18 September 2014 in Case C-205/13, Hauck GmbH & Co. KG v Stokke A/S et al. –

TRIPP-TRAPP

Reference from London High Court to CJEU for preliminary ruling in the context of an opposition filed by Cadbury against Nestlé

Judgment of 16 September 2015 in Case C-215/14, ‘Kit-Kat’

(1) To show acquired distinctiveness, does the applicant only need to

prove that a significant proportion of the relevant public associates

the mark with him?

Must be proved that the public relies on the shape alone to

identify the goods in question with the trademark owner. Mere

recognition of the shape is not enough, it must also act as a

badge of trade origin in its own right.

Judgment of 16 September 2015 in Case C-215/14, ‘Kit-Kat’

(2) Should trademark registration be denied for a shape that has three essential features, when one results from the nature of the goods and the others are necessary to obtain a technical result?

Yes, provided at least one ground for refusal is fully applicable to the shape at issue.

(3) Does the Trade Mark Directive prevent registration of shapes that are necessary to obtain a technical result?

Yes, but the shape as a whole may still be protectable even if there are individual features of the shape that fall foul of the provisions

Judgment of 16 September 2015 in Case C-215/14, ‘Kit-Kat’

Presentation Selected CJEU judgments on the registration of shape trademarks

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