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Trade Marks for 3D Shapes

The Court of Justice of the EU (CJEU) has given guidance on the interpretation of Article 3(1)(e) of the Trade Marks Directive in relation to the validity of 3D shape marks (Hauck GmbH & Co KG v Stokke A/S and others).

The CJEU has held that the ground for refusal in Article 3(1)(e)(i) (signs which consist exclusively of the shape which resulted from the nature of the goods themselves) is not restricted to signs which consist exclusively of shapes indispensable to the function of the goods in question such that it left the producer no leeway to make a personal essential contribution. If it were otherwise, the ground for refusal would only apply to (i) “natural products”, ie where there is no substitute; and (ii) “regulated products”, ie where the shape is prescribed by legal standards. Rather, Article 3(1)(e)(i) applies to signs which consist exclusively of the shape of a product with one or more essential characteristics (ie the most important elements of the sign) which are inherent to the generic function(s) of that product and which consumers may be looking for in competitors’ products.

In relation to the ground for refusal under Article 3(1)(e)(iii) (signs which consist exclusively of the shape which gave substantial value to the goods), the CJEU noted that the fact that the shape of a product was regarded as giving substantial value to that product did not mean that other characteristics might also give the product significant value. Thus, this provision may apply to a sign which consists exclusively of the shape of a product with several characteristics, each of which may give the product substantial value. Furthermore, the ground for refusal could not be limited purely to the shape of products having only artistic or ornamental value. The presumed perception of the sign by an average consumer is not a decisive element when applying Article 3(1)(e)(iii), but may be one relevant factor when identifying the essential characteristics of a sign.

The CJEU held that each of the grounds of refusal under Article 3(1)(e) are meant to be applied independently of the others. Therefore, if one ground is satisfied, a sign cannot be registered, regardless of whether an additional ground might apply.

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