AIPPI IP IN GERMANY AND FRANCE Paris, 7-8 November 2013 THREEE-DIMENSIONAL MARKS Contribution José MONTEIRO (L’Oréal) 9/8/20151AIPPI - FORUM - PARIS

9/8/20152AIPPI - FORUM - PARIS The state of law and practice before the Directive 89/104 of 21 December 1988, to approximate the laws of the Member States relating to trademarks

In France (Loi du 31 décembre 1964) 9/8/20153AIPPI - FORUM - PARIS

The question is whether the shape of the product per se, or the shape of the container or the packaging, are likely to be registered as a trademark. The issue was questionable for a certain doctrine. 9/8/20154AIPPI - FORUM - PARIS

However for the majority, the shape of a product is a material sign capable of identifying the source of origin of the product to which it applies. And the fact it fits into the product itself, doesn’t deprive it of this inherent dictinctive character. 9/8/20155AIPPI - FORUM - PARIS

It is the same, and probably more surely, of the packaging by the simple reason that if a packaging can be a protected trademark by its decoration, it can also be a trademark because of its shape. 9/8/20156AIPPI - FORUM - PARIS

Obviously, a shape or a container, is not distinctive when it is necessary to obtain a technical result. 9/8/20157AIPPI - FORUM - PARIS

9/8/2015AIPPI - FORUM - PARIS8Description Appl. Date / Reg.. Number DecisionMark Boite de confiseries cylindrique 26/01/ CA Paris 04/10/1990 Flacon de parfum 23/07/ CA Paris 29/03/1989 Sachet de couleur rose 06/05/ Cass. Com. 17/01/1989 Some examples of TM that have been estimated admissible by the French Courts

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The situation in Germany under the Warenzeichengesetz 9/8/201511AIPPI - FORUM - PARIS

Under the WZG, a trademark was understood to be a two-dimensional sign only. In order to get trademark protection for a three- dimensional form, one had to register a two-dimensional sign. The jurisdiction than also confirmed a likelihood of confusion between the registered sign and the get up used by of a third party. 9/8/2015AIPPI - FORUM - PARIS12

The shape of a product or its container could gain registration as a 3D trademark only if it was regarded in the concerned trade circles, as sufficiently distinctive i.e. if it had acquired a secondary meaning. 9/8/2015AIPPI - FORUM - PARIS13

9/8/2015AIPPI - FORUM - PARIS14 Registration no.Appl./Reg. DateMark DE / DE / DE / DE / EXAMPLES OF REGISTERED 2D SIGNS

9/8/2015AIPPI - FORUM - PARIS15 DE / DE / DE / DE /

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The directive 89/104 of 21 December 1988 (now Directive 2008/95 of 22 october 2008) to approximate the laws of the Member States relating to trademarks. 9/8/201517AIPPI - FORUM - PARIS

Preamble: Attainment of the objectives at which the approximation of TM laws is aiming, requires that the conditions for obtaining and continuing to hold a registered trademark be, in general, identical in all Member States. 9/8/201518AIPPI - FORUM - PARIS

To this end, it is necessary to list examples of signs which may constitute a trademark, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. 9/8/201519AIPPI - FORUM - PARIS

The grounds for refusal or invalidity concerning the trademark itself, for example, the absence of any distinctive character or conflicts between the trademark and earlier rights, should be listed in an exhaustive manner, even if some of these grounds are listed as an option for the Member States. 9/8/201520AIPPI - FORUM - PARIS

Article 2 Signs of which a trademark may consist Article 2 Signs of which a trademark may consist A trademark may consist of any signs capable of being represented graphically, particularly … the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. 9/8/201521AIPPI - FORUM - PARIS

Article 3 Grounds for refusal or invalidity 1. The following shall not be registered or, if registered, shall be liable to be declared invalid: (a) signs which cannot constitute a trademark; (b) trademarks which are devoid of any distinctive character; 9/8/201522AIPPI - FORUM - PARIS

e) signs which consist exclusively of: (i) the shape which results from the nature of the goods themselves; (ii) the shape of goods which is necessary to obtain a technical result; (iii) the shape which gives substantial value to the goods; 9/8/201523AIPPI - FORUM - PARIS

The ECJ and CFI case-law and the CTM practice by the OHIM 9/8/201524AIPPI - FORUM - PARIS

The main principles: The main principles: 1° the distinctive character of a trademark, must be assessed, firstly, by reference to the goods or services in respect of which registration has been applied for and, secondly, by reference to the perception by the relevant public, 2° The criteria for assessing the distinctive character of three-dimensional marks consisting of the shape of the product itself are not different from those applicable to other categories of trademarks. 9/8/201525AIPPI - FORUM - PARIS

3° None the less, for the purpose of applying those criteria, the relevant public's perception is not necessarily the same in the case of a 3D mark consisting of the shape of the product itself, as it is in the case of a word or figurative mark consisting of a sign which is independent from the appearance of the products. 9/8/201526AIPPI - FORUM - PARIS

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 distinctiveness in relation to such a three- dimensional mark than in relation to a word or figurative mark. 9/8/2015AIPPI - FORUM - PARIS27

28 May 2013, Case T-178/11, Voss of Norway A recent application reminds and explains more than usually, these principles CFI 28 May 2013, Case T-178/11, Voss of Norway 9/8/201528AIPPI - FORUM - PARIS

It follows from the case-law that average consumers (buyers of alcoholic or non-alcoholic beverages throughout the EU) do not normally choose a product or distinguish it from a competitor’s product, merely on the basis of its design or the design of its packaging. 9/8/201529AIPPI - FORUM - PARIS

On the contrary, they look for verbal or graphic signs, words, names, emblems, devices, images, etc., on the product or its packaging that will inform them more reliably about the origin of such product. 9/8/201530AIPPI - FORUM - PARIS

the common sense the practical experience Le Court also says that this ruling reflects the common sense and the practical experience as regards consumers’ behavior in respect of most products, which entails those consumers instinctively looking for a verbal or graphic sign on the product or its container. 9/8/201531AIPPI - FORUM - PARIS

That will tell them about the industrial or commercial origin of the product and then using that sign in order to distinguish that product from identical products made by other undertakings. 9/8/201532AIPPI - FORUM - PARIS

at a glance By contrast, consumers will not rely on the outline or shape of a product or its container in order to determine its origin without having been exposed to that outline or shape for a sufficiently long period to have learned to recognize it ‘at a glance’ without even needing to look for a verbal or graphic sign (as in the case of Coca ‑ Cola bottles). 9/8/201533AIPPI - FORUM - PARIS

That’s why the case-law dealing with the distinctive character of trademarks consisting of the appearance of a product or its container, says that ‘it might be more difficult to establish the distinctive character of that typology of marks than for verbal or figurative marks’. 9/8/201534AIPPI - FORUM - PARIS

well-known fact, It is also a well-known fact, for the Court, that very few products are offered on the market without any “verbal or graphic element” to identify them. Consumers are not, for that reason, used to choosing among unmarked products or packages. 9/8/201535AIPPI - FORUM - PARIS

Finally, branding practices are important and must be taken into consideration, when assessing the ability of a sign to function as a trademark. 9/8/201536AIPPI - FORUM - PARIS

And it’s time now to see with Laurence, Jochen and Ralf, how these principles are applied and enforced by our TM Offices and the Courts. Many thanks 9/8/2015AIPPI - FORUM - PARIS37