Keywords
Summary

Keywords

1. Approximation of laws — Trade marks — Directive 89/104 — Where registration of a trade mark may be refused or the trade mark declared invalid — Trade mark devoid of distinctive character — Determination whether a three-dimensional shape of product trade mark has a distinctive character — Application of the same criteria as for other types of mark — (Council Directive 89/104, Art. 3(1)(b) and 3(3))

2. Approximation of laws — Trade marks — Directive 89/104 — Where registration of a trade mark may be refused or the trade mark declared invalid — Three-dimensional shape of product marks — Specific grounds for refusal in Article 3(1)(e) — Preliminary obstacle not preventing the application of the other grounds for refusing registration — Examination of the grounds for refusal in Article 3(1)(c) — Account taken of the public interest in preserving the availability of certain marks — (Council Directive 89/104, Art. 3(1)(c) and (e) and 3(3))

Summary

1. When assessing the distinctiveness of a three-dimensional shape of product trade mark for the purposes of Article 3(1)(b) of First Directive 89/104 relating to trade marks, a stricter test than that used for other types of trade mark must not be applied.

It is nevertheless true that, in view of the test for assessing distinctiveness, it may in practice be more difficult to establish distinctiveness in relation to a shape of product mark than a word or figurative trade mark. But whilst that may explain why such a mark is refused registration, it does not mean that it cannot acquire distinctive character following the use that has been made of it and thus be registered as a trade mark under Article 3(3) of the directive.

see paras 48-49, operative part 1

2. The specific grounds for refusing the registration of certain signs consisting of the shape of the product set out expressly in Article 3(1)(e) of First Directive 89/104 relating to trade marks constitute a preliminary obstacle liable to prevent such signs from being registrable. However, even if that preliminary obstacle is overcome, neither the wording of Article 3(1) of the directive nor the scheme of the directive indicates that the other grounds for refusing registration in that provision should not also apply to applications to register three-dimensional shape of product marks.

It follows that, independently of Article 3(1)(e) of the directive, Article 3(1)(c) also has significance for three-dimensional shape of product trade marks.

When examining the ground for refusing registration in Article 3(1)(c) in a concrete case, regard must be had to the public interest underlying that provision, which is that all three-dimensional shape of product trade marks which consist exclusively of signs or indications which may serve to designate the characteristics of the goods or service within the meaning of that provision should be freely available to all and, subject always to Article 3(3) of the directive, cannot be registered.

see paras 65-66, 70, 77, operative part 2