OBJECTIONS TO THE REGISTRATION OF SHAPE TRADE MARKS Gordon HUMPHREYS Chairperson of the 5th Board of Appeal

INTRODUCTION General rule of registrability Art. 2 TMD (Art. 4 EUTMR) ‘The shape of goods or their packaging’

TWO TRADITIONAL OBJECTIONS: (cont.) I – DISTINCTIVE CHARACTER Art. 3(1)(b) TMD (Art. 7(1)(b) EUTMR) devoid of distinctive character 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 R 832/2012-2 (Chewing gum container)

TWO TRADITIONAL OBJECTIONS: (cont.) I – DISTINCTIVE CHARACTER Acquired distinctiveness throughout the EU Coca Cola, 24 February 2016, T-411/14; John Deere, 28 October 2010, T-137/08 (BCS v OHIM - Deere) 16 September 2015 in Case C-215/14, Kit-Kat Must be proved that the shape alone, as opposed to any other trade mark which may also be present, indicates the commercial origin of the goods (§66).

Art. 3(1)e TMD (Art. 7(1)e EUTMR) II - SHAPE Art. 3(1)(e) TMD (Art. 7(1)(e) EUTMR) A sign will be refused or invalidated where it consists exclusively of: the shape, or another characteristic, which results from the nature of the goods themselves; [nature] the shape of goods, or another characteristic, which is necessary to obtain a technical result; [function] the shape, or another characteristic, which gives substantial value to the goods. [aesthetic value]

Judgment of 18 September 2014 in Case C-205/13, Hauck GmbH & Co Judgment of 18 September 2014 in Case C-205/13, Hauck GmbH & Co. KG v Stokke A/S et al. – TRIPP-TRAPP 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 Judgment of 18 September 2014 in Case C-205/13, Hauck GmbH & Co. KG v Stokke A/S et al. – TRIPP-TRAPP NATURE OF PRODUCT Art. 3(1)(e)(i) 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 – e.g. legs with a horizontal level for a table; an orthopaedic-shaped sole with a V-shaped strap for flip-flops (opinion of 14/05/2014, C-205/13, § 59); those essentials characteristics are ones that consumers may look for in competitors’ products. The average consumer’s perception is not decisive but may be relevant when assessing what are the essential characteristic of the sign.

TECHNICAL RESULT Art. 3(1)e (ii) TMD Cannot be cured by acquired distinctiveness 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.

TECHNICAL RESULT 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’. the shape of goods examined is the technically preferable solution for the category of goods concerned goods concerned…’ (§60) and patents are prima facie evidence of functionality. It is for national courts to identify the essential characteristics of the shape.

TECHNICAL RESULT SHAPE OBJECTIONS: Art. 7(1)(e)(ii) EUTMR Simba Toys, C-30/15 May be objectively inferred from the graphical representation.

SHAPE OBJECTION: Art. 7(1)(e)(iii) EUTMR – SUBSTANTIAL VALUE LOUDSPEAKER, T-508/08 The design is very important in the consumer’s choice even if he takes other characteristics of the goods at issue into account. Aesthetic characteristics of the shape are emphasised in marketing materials (pure, slender, timeless sculpture for music reproduction) R 664/2011-5