APRAM / AIPLA – Joint meeting 9 June 2015 The difficult protection of 3D trademarks in Europe Eric LE BELLOUR French and European Trademarks and Designs Attorney 1

INTRODUCTION IN THEORY, shape trademarks are trademarks among others:  Shapes can be protected by trademark law, as recalled by French and Community legislation: “a trademark may consist of the shape of goods or of their packaging”, rule applying to both national and Community trademarks IN PRACTICE, shape trademarks have to face:  A wide definition of 3D trademarks (I)  Three specific grounds of refusal/invalidity, as preliminary obstacles (II)  A stronger distinctiveness examination (III) 2

PART I - WHICH SIGNS ARE CONCERNED ? Without doubt, 3D signs which represent the product itself : The sign is the product 3

PART I - WHICH SIGNS ARE CONCERNED ?  According to the case law, same rules apply to 2D trademarks 4 EGC 8 May 2012, T-331/10, T-416/10 YOSHIDA ECJ 20 Sept. 2007, C-371/06 BENNETON/G-STAR 1st Court of Paris (TGI), 10 February 2012 (RG 10/14191) BURBERRY

PART I - WHICH SIGNS ARE CONCERNED ?  Even if the sign represents only a part of the product ECJ, 18 June 2002, case C 299/99, PHILIPS 5

PART II - THREE SPECIFIC CRITERIA FOR 3D TRADEMARKS THREE SPECIFIC GROUNDS OF REFUSAL/INVALIDITY (Article 3(1)(e) of Directive 89/104) Protection is refused for signs:  that consist exclusively of the shape resulting from the nature of the product itself,  the shape of the product necessary for obtaining a technical result,  or a shape which gives substantial value to the good. They are “preliminary obstacles”  even a distinctive shape (through use or by itself) can be refused registration as a trademark or may be declared invalid if it results exclusively from the nature of the good or if it is functional or aesthetical. 6

 WHY ? Prevent the exclusive and permanent right which a trade mark confers from serving to extend the life of other rights, which the legislature has sought to make subject to limited periods, namely industrial patents and designs  DEFINITION OF THE CRITERIA ? 7 PART II - THREE SPECIFIC CRITERIA FOR 3D TRADEMARKS A very helpful recent judgment of the European Court of Justice : ECJ 18 Septembre 2014, C-205/13, Hauck / Stokke et Peter Opsvik « Tripp Trapp Chair »

Natural Shape : shape resulting from the nature of the product itself - a wider interpretation since Tripp Trapp Case  A natural shape for a kind of product : a shape all of whose essential characteristics result from the nature of the product concerned  The fact that that product can also take a different, alternative shape is irrelevant 8

Functional shape : shape of the product necessary for obtaining a technical result  Minor elements are not taking into account : “The presence of one or of a few minor arbitrary elements in a three dimensional sign whose essential characteristics have a technical function does not affect the conclusion that the sign consists exclusively of the shape of goods which is necessary to obtain a technical result” (ECJ, Grand Chamber, 14 September 2010, case C-48/09 P, paragraph 17, Lego) 9  A shape will be an exclusively functional shape when “all the essential characteristics of the shape perform a technical function”

Ornamental shape: Shape which gives substantial value to the good Definition : a three dimensional sign whose essential characteristics are aesthetic Main criteria and facts:  Preliminary obstacle: the use, notoriety and distinctiveness have not to be taken into consideration  Determination of the part of design in the economic value of the signs : the design of the product is the main motivation of purchase for the consumer  Importance of the nature of the products concerned 10

SUBSTANTIAL VALUE : IMPORTANCE OF THE PRODUCTS AND SERVICES DESIGNATED If the shape does not correspond to the product itself, the substantial value is not really an issue  Example of the shape of a bottle to designate « perfumes » (and not « bottles ») 11

SUBSTANTIAL VALUE : IMPORTANCE OF THE PRODUCTS AND SERVICES DESIGNATED If the shape represents the product while not being the motivation for purchase  Example of chocolates, the consumer does not purchase chocolate products for their shape, but mainly for their taste : 12 Court of Appeal, Paris, 30 January 2009

SUBSTANTIAL VALUE : EXAMPLE OF REFUSED TRADEMARKS Example 1: Shape of pants - at the time of the filing of the trademark, the value of the products was mainly based on the aesthetic of the pants. Therefore, the trademark is cancelled, despite its notoriety acquired after filing 13 ECJ 20 sept 2007, C-371/06 BENETTON/G- STAR

SUBSTANTIAL VALUE : EXAMPLE OF REFUSED TRADEMARKS Example 2: Shape of a loudspeaker (B.O.) – the trademark is refused, based on substantial value. According to the Court, “the shape for which registration was sought reveals a very specific design and the applicant itself admits (…) that that design is an essential element of its branding and increases the appeal of the product at issue, that is to say, its value.” 14 EGC 06 Oct T-508/08 B&O

THREE SPECIFIC CRITERIA FOR 3D TRADEMARKS : WHAT’S NEW FURTHER TO THE TRIPP-TRAPP CASE ?  The three criteria are independant : a trademark must be refused on the basis of one of the criteria, not on the combination of the criteria.  Wider interpretion of the substantial value: a shape whose aesthetic characteristics constitute one of the principal elements determining the market value of the goods concerned, BUT that interpretation does not preclude the goods from having other characteristics (functional for instance) which are important to the consumer.  For the interpretation, can be taken into consideration : the nature of the category of goods under consideration, the artistic value of the shape concerned, its dissimilarity from other shapes in common use on the market concerned, the substantial price difference in relation to competing products, and a promotion strategy emphasising principally the aesthetic characteristics of the goods concerned 15

 WHEN ? If the shape is not natural, functional or ornamental (3 previous criteria), then the shape must be considered as distinctive  WHY ? “Average consumers are not in the habit of making 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, and it could therefore prove more difficult to establish distinctive character in relation to such a three- dimensional mark” (EGC C-344/10 P – 20 November Freixenet v OHIM - pt 46)  IMPORTANCE OF USE AND NOTORIETY 16 PART III – A STRONGER DISTINCTIVENESS EXAMINATION

EXAMPLE OF VALID SHAPE TRADEMARKS « Aluminium Chair » Of Eames, a valid community trademark: 17 OHIM Board of Appeal, 14 December 2010 (case R 486/ )  According to examinators, design is not an essential characterist of the product, not a motivation for purchase (questionable ?)  The chair has become distinctive through use

EXAMPLE OF VALID SHAPE TRADEMARKS « Kelly Handbag » of Hermes, a valid Community trademark:  The « Kelly », originally designed in 1935, remained almost unnoticed for twenty years and was only brought into limelight when Grace Kelly used the handbag to hide her pregnancy  The economic value of this handbag is rather due to the high quality and the notoriety of the product, rather than to its design 18 Community trademark No , filed on 26 May 2005, registered

EXAMPLE OF REJECTED SHAPE TRADEMARKS (for lack of distinctiveness) 19 ECJ C ‑ 98/11 P, 24 May 2012, Chocoladefabriken Lindt & Sprüngli AG / OHIM, shape of a rabbit, for chocolates ECJ 7 mai 2015, C-445/13P Voss of Norway – INTA / OHMI – Nordic Spirit, Shape of a bottle for mineral water

The criteria for protection of shape trademarks 20

CONCLUSION A protection possible for these kind of shapes : 21 Community trademark No filed on 29 March 1996 (for lighters), registered on the basis of distinctiveness through use Community trademark No , filed on 21 May 2012 (for perfumes), registered

CONCLUSION Very difficult to protect these kinds of shapes, which correspond to the products designated: Car pictures for « vehicles », shoes representations for « shoes », a chair design for « furnitures »…. 22

THANKS ! 23 Wiplaw France 21, place de la République F Paris Tél. : +33 (0) Mob. : +33 (0) Fax : +33 (0) Wiplaw Belgique Avenue Louise, 523 B-1050 Bruxelles Tél. : +32 (0) Mob. : +32 (0) Fax : +32 (0)