FEATURE
CHALLENGES WITH 3D MARKS
Challenges
with 3D marks
Registrations for 3D marks are extremely attractive to rights holders –
so much so that the European Court of Justice is continually adopting a
stricter interpretation of the absolute grounds for refusal
Registering three-dimensional (3D) trademarks provides
rights holders with the opportunity to gain a permanent
monopoly for a specific product design. Obviously,
most companies prefer to add this registration to their
common design rights and often seek to obtain 3D
trademark registrations for all sorts of shapes and designs
– even some that hardly qualify as a trademark as such.
In order to prevent any circumvention and to ensure
that the registration of a shape mark does not become an
alternative to design registration, patent registration or
copyright – which all enjoy limited periods of protection
– the European Court of Justice (ECJ) is adopting an
increasingly strict interpretation of the absolute grounds for
refusal of trademark registrations set out in Article 7 of the
EU Community Trademark Regulation (207/2009) on the.
This article examines when a product shape qualifies
for 3D trademark protection in light of the relevant
European case law over the past few years, as well as how
the three absolute grounds for refusal laid down in Article
7(e) interact with one another and whether they are
reasonable and necessary.
When is a 3D trademark distinctive?
All trademarks must possess distinctive character.
However, ECJ case law illustrates a more restrictive
requirement in relation to 3D trademarks. In Mag
Instruments (2004, C-136/02 P) the ECJ stated that the
relevant public is less likely to make assumptions about
the origin of products on the basis of their shape or the
shape of their packaging in the absence of any graphic or
word element. As a consequence, it seems more difficult
to establish distinctiveness in 3D trademarks than in
word or figurative marks, as only a mark which departs
significantly from the norm or customs of the sector is
likely to indicate origin.
This same strict and sensible interpretation was
applied recently when the General Court refused the
registration of Lindt’s 3D chocolate bunnies (T-336/08,
58 | OCTOBER/NOVEMBER 2014 T-337-08, T-346/08 and T-395-08). These marks were not
suitable to identify the trade origin of the goods, as the
shape and packaging were typical ‘seasonal’ shapes used
for chocolate confectionery.
But when do designs or shapes diverge significantly
from the norms of the sector and function as a badge
of origin? Despite its somewhat specialised design,
the Voss bottle was found to be only a variant of the
existing shapes, since bottles come in all sorts of shapes
and sizes. As a result, it was found that the bottle did
not possess sufficient distinctive character (T-178/11).
This decision from the General Court has been
appealed to the ECJ and it remains to be seen whether
the court will be equally strict in its assessment of
distinctive character and whether the decision will be
interpreted as making it almost impossible to obtain 3D
shape marks for products such as chocolate and bottles
which vary in design and appearance.
Further to these challenges, applicants must also
accept the uncertainties as to how acquired distinctive
character is established. This is illustrated by the facts
of the ongoing dispute over Nestlé’s registration for the
3D shape of a Kit Kat. In December 2012 the Second
Appeal Board of the Office for Harmonisation in
the Internal Market found that the shape had
acquired distinctiveness in the market due
to its strong presence and distribution
among consumers. However,
the UK IP Office nevertheless
refused to register Nestlé’s mark
– both due to lack of
distinctiveness
and due
to the
AUTHOR:
ANDERS MICHAEL
POULSEN
In a case regarding
registration of the
iconic LEGO brick,
the ECJ further
clarified that the
shape need not be
exclusively functional
to be excluded from
registration, as long
as all of the essential
characteristics of
a shape perform a
technical function
www.worldtrademarkreview.com
functionality of the design with reference to Article
7(e)(ii), as it found that the presence of breaking
grooves was a feature necessary to achieve a technical
result.
Nestlé appealed and Justice Arnold referred two
questions to the ECJ, the most interesting in this regard
being whether – in order to establish acquired distinctive
character – it is necessary only to prove that the public
recognise the mark and associate it with the applicant,
or whether it must be proved that the public rely on this
mark (as opposed to any other trademarks) as indicating
the origin. The judge himself found that the answer must
be the latter.
The ECJ’s decision is eagerly anticipated. If it agrees with
Arnold, this could suggest there may be severe difficulties
in establishing acquired distinctive character. When does
the public rely purely on the shape of a product as a badge
of origin rather than its actual name or logo? I cannot
think of one example. Consequently, the result of such an
outcome will be that shape marks either have inherent
distinctive character – which, as shown above, is already
very difficult to establish – or are not distinctive at all.
The General Court
ruled that Lindt’s
3D chocolate
bunnies were not
suitable to identify
the trade origin of
the goods, as the
shape and packaging
were typical
‘seasonal’ shapes
used for chocolate
confectionery
What about functional shapes?
It is not possible for applicants to register trademarks for
shapes which are necessary to obtain a technical result
(see Article 7(e)(ii)). The obvious purpose of this provision
is to prevent circumvention of time-limited patent rights
by registering functional shape marks. The leading case
is Philips (C-299/99), in which the ECJ clarified that the
provision applies to shapes necessary to obtain a technical
result, even if it is possible to achieve the same result
with other shapes. The reasoning seems clear. If such
a registration were possible, then every possible way of
achieving the same technical result would soon be applied
for as a trademark shape, thus excluding competitors from
the technical solutions for an unlimited period.
In the later LEGO case regarding registration of the
iconic LEGO brick (C-48/09), this interpretation was
confirmed by the ECJ. The ECJ further clarified that
the shape need not be exclusively functional to be
excluded from registration, as long as all of the essential
characteristics of a shape perform a technical function.
But which of a shape’s characteristics can be seen as
essential? The only vague guideline issued by the ECJ in
this regard is that the perception of the average consumer
is a relevant criterion (C-48/09, para 76). Obviously, this is
of little help when trying to assess whether a functional
shape with aesthetic appeal is eligible for registration.
Due to the purpose of the provision, it is very probable
that the non-functional characteristics must be considered
essential in order for the ECJ to allow the registration of a
shape which is necessary to achieve a technical result.
However, when a shape departs significantly from
the norm, passing the distinctive character test, or when
the aesthetic appeal of a functional shape is essential,
there is a genuine risk that the shape can be seen as
adding substantial value to the product and so be refused
registration as a 3D trademark due to Article 7(e)(iii).
The primary purpose of this provision is to ensure that
designs with eye appeal are not granted a permanent
monopoly, which would render the 25-year term of design
protection irrelevant.
www.worldtrademarkreview.com When does the shape add substantial value
to a product?
In 2011 the General Court applied Article 7(e)(iii) when
refusing Bang & Olufsen’s application for a 3D trademark
depicting its speaker (T-508/08). The General Court
noted that the design was an essential element of Bang &
Olufsen’s branding, increased the appeal of the product
at issue and was an important selling point. Further, it
was stated that the fact that the shape was considered to
give substantial value to the goods did not preclude other
characteristics from also conferring considerable value.
The motive for the decision is reasonable. A design as
such should not enjoy protection for longer than 25 years.
However, the reasoning behind the decision does create
some doubt. The very fact that the design is an important
element of Bang & Olufsen’s branding seems to suggest that
such shape marks do function as a badge of origin. Further,
does the added value not exist primarily in the fact that the
design gives the consumer the aura of exclusivity that is
Bang & Olufsen? Arguably, the primary added value of the
speaker design is that it functions as a badge of origin – the
meaning of a trademark.
In light of this reasoning, one might ask when it is
possible for famous brands to obtain a 3D trademark
registration for a design which functions as a badge of
origin, without adding substantial value to the product.
A recent decision of the Brussels District Court (AR
2013-6154) regarding the protection of the Louboutin ‘red
sole’ trademark illustrates this problem. The Benelux
trademark for the red sole was declared invalid, as it
was seen as adding substantial value to the shoes. Once
again, one could argue that the red soles are valuable
only because of what they represent – the luxury worldfamous brand Louboutin. Consequently, the reasoning
given by the Belgian court may appear dubious.
In some way it seems ironic that the success of the
OCTOBER/NOVEMBER 2014 | 59
FEATURE
CHALLENGES WITH 3D MARKS
above-mentioned famous products and the designs’
ability to function as a badge of origin can lead to marks
being declared invalid – as the success can be attributed
to the added value of the design. In other words,
one might conclude that trademark law does offer
protection for a product’s design, provided that this is
not too good or does not become too famous.
PICTURE: JON LE-BON/
SHUTTERSTOCK.COM
How do the absolute grounds for refusal
interact with each other?
As shown above, the 3D shape applied for must differ
significantly from the norm and have more than a purely
functional characteristic in order to possess distinctive
character. However, at the same time, it may not have eye
appeal, which adds substantial value to the product. This
is a very thin line, as a design which does function as a
badge of origin will often be seen as adding substantial
value in itself.
The latest ECJ case law appears to follow the strict
interpretation of the ‘added substantial value’ provision.
In a recent opinion from the advocate general in the
Hauck case regarding protection for a baby chair
(C-205/13), the scope of the ‘substantial value’ provision
also related to goods which were not usually perceived
as objects (which performed a decorative function), but
where the aesthetics of the shape constituted one of the
product’s essential characteristics.
If the ECJ agrees with the advocate general, it will leave
even less room for 3D shape marks to operate when it comes
to shapes that are necessary to achieve a technical result.
The essential characteristics may not perform a technical
function, but at the same time none of these may be the
aesthetics of the shape. On this basis, one might conclude
that no shape necessary to achieve a technical result will
be eligible for registration, regardless of its design, and
that applicants are caught between these two provisions.
However, obviously further decisions from the ECJ are
awaited before such conclusions can be drawn.
The above-mentioned pending Nestlé case will also
shed some light on how the absolute grounds interact
with each other. The Kit Kat bar consists of three essential
features - one resulting from the nature of the goods (the
slab shape of the mark) and two which are necessary to
achieve a technical result (the position and depth of the
breaking grooves, as well as the number of fingers). In
this regard, the ECJ has been asked to clarify whether
the same absolute ground for refusal must apply to all
essential features in order for a shape registration to be
rejected or whether registration will still be refused as
long as all essential features are covered by an absolute
ground, regardless of which one it is. Arnold is of the
opinion that it would be bizarre if such a shape could be
The Second Appeal
Board of OHIM found
that the Kit Kat
shape had acquired
distinctiveness in the
market due to its
strong presence and
distribution among
consumers. However,
the UK IP Office
nevertheless refused
to register the mark
It seems ironic that the success of famous
products and the designs’ ability to
function as a badge of origin can lead to
marks being declared invalid
60 | OCTOBER/NOVEMBER 2014 registered and the answer does indeed seem obvious.
The third absolute ground for refusal listed in Article 7(e)
(i) excludes “shapes which results from the nature of the
goods themselves” and is not further analysed here. This
is because the provision applies only to the registration of
basic or generic shapes and did not, for example, succeed
against the shape of a three-headed electric shaver in
the above-mentioned Philips case. Due to its narrow
interpretation, the need for this independent ground is
limited, as it seems likely that such basic or generic shapes
will be rejected anyway – due to either lack of distinctive
character or the fact that the shape is necessary to obtain a
technical result.
When assessing how the absolute grounds for refusal
interact, it seems apparent that – apart from Article
7(e)(i) – they each serve the clear purpose of avoiding
various kinds of circumvention. However, when the ECJ
expands the applicability of each ground, the result is
a very small playing field with little transparency for
applicants of 3D marks.
Final comments
The reasoning behind the strict interpretation of the
absolute grounds for refusal in relation to 3D shape marks
is clear and comprehensive. There is an obvious case
for free competition and the design and functionality of
products can acquire protection through other IP rights.
Arguably, the difficulties in overcoming the
increasingly strict requirements as to both inherent
and acquired distinctive character should be sufficient
to ensure that only actual badges of origin will enjoy
trademark protection.
Consequently, the substantial value provision seems
like an unnecessary obstacle. When a shape is sufficiently
distinctive to qualify as a badge of origin and thus
function as a trademark, it seems unreasonable to refuse
trademark registration merely due to the value that the
mark adds to the product.
Deleting the substantial value provision from the
absolute grounds would leave the courts to decide only
whether the shape is distinctive – and can function
properly as a badge of origin – and whether the shape is
necessary to obtain a technical result or result from the
nature of the goods themselves. These requirements and
their strict interpretation should be sufficient to ensure that
only actual trademarks will enjoy protection as such.
Anders Michael Poulsen is attorney at law at Awapatent A/S
anders.michael.poulsen@awapatent.com
www.worldtrademarkreview.com