European Business Law, the fourth volume in our series, shows how the European authorities simultaneously abolish all restrictions on access to and exercise of economic activities and support the growth of domestic markets, through the harmonization the internal legislation or the enactment of genuinely unified regulations.

European Business Law

In principle, a sign which consists of the shape of a good may constitute a trade mark. A public interest requirement however sets forth that purely functional shapes should be made freely available to all economic traders. Article 4(1)(e) of Directive No 2015/2436  thus provides for three exhaustive grounds for refusal of registration of a sign which consists exclusively of the shape of a good: ( …

Signs consisting exclusively of the shape of the good

In principle, a sign which consists of the shape of a good may constitute a trade mark. A public interest requirement however sets forth that purely functional shapes should be made freely available to all economic traders. Article 4(1)(e) of Directive No 2015/2436  thus provides for three exhaustive grounds for refusal of registration of a sign which consists exclusively of the shape of a good: (i) the shape or another characteristic, which results from the nature of the good itself, (ii) the shape or another characteristic of the product which is necessary to obtain a technical result and, (iii) the shape which gives substantial value to the good. The grounds are autonomous: it only requires one of them to be met for registraton be refused .

1) The shape or another characteristic which results from the nature of the good itself

The application for registration may relate to the shape of the packaging of the good rather than the good itself. Two types of goods are thus distinguished: goods which possess an intrinsic shape and it is unnecessary to give them a particular shape to enable them to be marketed (e.g. nails) and goods which do not possess an intrinsic shape and must be packaged in order to be marketed (e.g. goods manufactured in the form of granules, powder or liquid). In that case, the packaging chosen gave the good a shape that could be protected .

2) The shape or another characteristic of the product necessary to obtain a technical result

The shape of the product is deemed necessary to obtain a technical result where the essential characteristics of that shape fulfill a technical function. In that case, the manner in which the goods function is important, not their method of manufacture . For a sign made up of both functional and capricious components, the supervisory authorities thus check that the capricious components are not dominating in the general impression produced by the trade mark before refusing the registration . The existence of other forms that make it possible to obtain the same technical result is not such as setting aside the ground for refusal or invalidity of the registration.

3) The shape or another characteristic which gives substantial value to the good

The shape may give added value to the good (e.g., a specific garment cut). That value cannot be limited purely to the shape of products having only artistic or ornamental value but concerns all the essential functional characteristics, as the target public's perception of the shape of that product is only one of the assessment criteria which may be used to determine whether that ground for refusal is applicable . The Court has recently held that a sign consisting of a color applied to the sole of a high-heeled shoe cannot be regarded as consisting “exclusively” of a shape where the main element of that sign is a specific color -red - designated by an internationally recognized identification code: the mark therefore does not fall within the scope of the prohibition of the registration of shapes .

However, a sign consisting of the shape of a product may never acquire a distinctive character through use , unlike the other grounds for refusal to register. Therefore, a sign which initially consisted exclusively of a shape giving substantial value to the good which subsequently and prior to the application for registration acquired recognition following advertising campaigns, cannot constitute a trade mark on account of the use made of it . As each of the grounds for refusal to register is independent of the others, there is nothing to prevent the provisions relating to the refusal of registration of descriptive marks from applying to an application for a three-dimensional mark consisting of the form of a product which is not refused under Article 4(1)(e) .

Case C-205/13 Hauck & Co., Judgment of 18 September 2014, LawLex201400000939JBJ.

See Case C-218/01 Henkel [2004] ECR I-1725, LawLex200900001242JBJ, in respect of a manufacturer of liquid detergents who had applied for registration as a color three-dimensional trade mark of a shape consisting of a tall bottle, which narrows towards the top, with an integral handle, a rather small pouring aperture and et a two-level stopper, which can also be used a measuring cup. In such a case, the shape of the product and that of the packaging have been assimilated for purposes of assessment of the grounds for refusal to register.

Case C-215/14 Nestlé, Judgment of 16 September 2015, LawLex201500001091JBJ.

Case C-299/99 Philips [2002] ECR I-5475, LawLex200900001434JBJ, regarding the shape of a three-headed rotary shaver in the shape of an equilateral triangle.

Case C-205/13 Hauck GmbH & Co. KG, Judgment of 18 September 2014, LawLex201400000939JBJ.

Case C-163/16 Louboutin, Judgment of 12 June 2018, LawLex201800000904JBJ.

Case C-371/06 Benetton Group [2007] ECR I-7709, LawLex200900000569JBJ, for G-Star trousers with, inter alia, an oval kneepad and two lines of sloping stitching from hip height to crotch level.

Case C-53/01 Linde and others [2003] ECR I-3161, LawLex200900001032JBJ.

European Business Law

237. Signs consisting exclusively of the shape of the good

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237. Signs consisting exclusively of the shape of the good

Demandez un accès gratuit au contenu exclusif Livv – juristes d’entreprise

Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

Demandez un accès gratuit
au contenu exclusif Livv – juristes d’entreprise