A new challenge for 3D trademarks registration.

October 29, 2014
Szymon Gajda

Recent judgment issued on 18 September 2014 (Case C – 205/13 Hauck GmbH & Co.KG v Stokke A/S, Stokke Nederland BV, Peter Opsvik and Peter Opsvik A/S), by the European Court of Justice contains significant guidelines regarding registration of 3D trademarks, which base on the shape of the object.

The court formed two negative conditions of such a registration. The trademark can’t be validly registered when even one condition occurs: its shape which results from the nature of the object (goods) themselves or shape gives substantial value to the goods.

The Court points out first of all that the concept of a ‘shape which results from the nature of the goods themselves’ means that shapes with essential characteristics which are inherent to the generic function or functions of such goods must, in principle, also be denied registration. Reserving such characteristics to a single economic operator would make it difficult for competing undertakings to give their goods a shape which would be suited to the use for which those goods are intended. Moreover, those are essential characteristics which consumers will be looking for in the products of competitors, given that they are intended to perform an identical or similar function.

As regards the ground of refusal or invalidity on the basis of a ‘shape which gives substantial value to the goods’ the Court observes that this concept cannot be limited purely to the shape of products having only artistic or ornamental value, as there is otherwise a risk that products which have essential functional characteristics as well as a significant aesthetic element will not be covered. The fact that the shape of a product is regarded as giving substantial value to that product does not mean that other characteristics may not also give the product significant value. Thus, the aim of preventing the exclusive and permanent right which a trade mark confers from serving to extend indefinitely the life of other rights which the EU legislature has sought to make subject to limited periods requires that the possibility of applying that ground of refusal or invalidity not be automatically ruled out when, in addition to its aesthetic function, the product concerned also performs other essential functions. The presumed perception of the sign by the average consumer is not a decisive element when applying that ground for refusal, but may, at most, be a relevant criterion of assessment for the competent authority in identifying the essential characteristics of that sign. Other assessment criteria may also be taken into account, such as the nature of the category of goods concerned, the artistic value of the shape in question, its dissimilarity from other shapes in common use on the market concerned, a substantial price difference in relation to similar products, and the development of a promotion strategy which focuses on accentuating the aesthetic characteristics of the product in question.

Recent judgement may have a negative impact on registration of 3D trademarks. Polish Patent Office is already reluctant for their registration. Now ECJ gave more arguments in this matter.