EJWP 04/04
Shapes as trademarks Current enigmas The Hon. Mr Justice Pumfrey
Patents Court & Chancery Division. 2nd March 2004
This is a summary of a paper presented at the Oxford University Intellectual Property Research Centre Research Seminar, on 2nd March 2004.
Shapes as trademarks Current enigmas.
Outline
1.
What is a trade mark consisting of a shape? Directive 89/104 10th recital and the corresponding recital in Regulation 40/94: guarantee of a trade mark as an indication of origin.
2.
Anything goes: Art 2: any sign capable of being represented graphically, including the shape of goods or their packaging. Note that capability of distinguishing within Art 2 is not a separate ground for revocation, the only question being under Arts 3(1)(b) (devoid of any distinctive character) and 3(3) (acquired distinctiveness). See case 299/99 Philips v Remington.
3.
Absolute grounds for refusal: Art 3(1) of the Directive, particularly 3(1)(b), (c) and (e). Note that (b) (devoid of any distinctive character) and (c) (descriptiveness) may yield to acquired distinctiveness (Art 3(3)) but that the Art 3(1)(e) objection is not overcome by proof of distinctiveness in fact.
4.
Art 3(1)(e) excludes three classes of shape marks : those consisting exclusively of: the shape which results from the nature of the goods themselves, or
the shape of goods which is necessary to obtain a technical result, or the shape which gives substantial value to the goods. 5. Philips v Remington. Three headed electric razors C-299/99 [2002] ETMR 81 (955). Rationale of Art 3(1)(e) is to prevent the proprietor from acquiring a monopoly in technical solutions or functional characteristics which a user is likely to seek in the products of competitors . Mere fact that same technical result can be achieved using other shapes is not sufficient for registrability. Judgments paras 82-3. 6. Linde, Windward and Rado. Forklift trucks, the Maglite torch and a watch. C-53/01 to C-55/01, [2003] ETMR 78 (963). Emphasis on desirability of permitting typical shapes to remain available in the public interest.: see paragraphs 72-4 of the judgment. 7. Henkel. Detergent blocks. Cases C-456/01P, C-457/01P, C468/01P to C-472/01P, C-473/01P and C-474/01P. Opinion of the Advocate General Ruiz-Jarabo Colomer. 6 November 2003. • The assessment of distinctiveness must be made both at the time of application and at the time of registration: no point in registering something that must immediately come off.
• The desirability of preserving the availability of the mark may be taken into account under Art 7(1)(b), but this is not certain. It is the concerned of 7(1)(c) and (e).para 48, 78. • The average consumer is to be considered: his precise characteristics are a matter of fact (this may be self-defence on the part of the ECJ). • The correct test was applied by the CFI, viz, that these were ordinary shapes for tablets ( ideal paradigmatic concept of the product ). 8. Henkel detergent bottles.Case C-218/01, Judgment of 12 February 2004. • Three dimensional marks consisting of the shapes of packages of products packaged for reasons related to the nature of the products themselves are to be assimilated to the shape fof the product for the purposes of Art 3(1)(e); • The distinctiveness of such a mark for the purposes of Art 3(1)(b) must be assessed by reference to the average consumer, reasonably well-informed and observant, and must permit him to distinguish the product from those of other manufacturers without analysis or careful examination. • Distinctive character may be assessed in the national context by reference only to national commercial practices, without
considering the extent to which similar marks have been registered or refused registration elsewhere in the European Union, although registration elsewhere may be relied on as a factor tending to indicate that the mark has a distinctive character. 9. DaimlerChrysler. Jeep grille. [2003] ETMR 87 (1050).
10.
Objection was that the grille was devoid of any distinctive character for land vehicles, and had not acquired distinctiveness. Upheld on appeal to 2nd Board of Appeal. Reversed. No objection taken under Art 7(1)(e). Points: • Evidence that grilles used to distinguish; • Grilles no longer completely functional; • Not relevant that fulfil several functions, if one of those purposes is as a mark; • Thus no objection under art 7(1)(b). Capable of leaving an impression on the memory of the target public as an indication of commercial origin and thus of distinguishing and setting apart motor vehicles bearing that grille from those of other undertakings.
• No discussion of 7(1)(c), as the objection was not taken.
Where are we getting on all this?
11.
Notable, perhaps, is that most of the cases are being dealt with under Art 7(1)(b) or (c), rather than (e). Philips shows that Art 7(1)(e) has its own problems, and moreover overlaps with (b) to a considerable extent (indeed, the factors may be very similar). (e) is undoubtedly a right to use safeguard of the kind that AG Colomer wishes to inform our consideration of 7(1)(c) in the light of Windsurfing.