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AIPPI 2018 - Study Question - Registrability of 3D trademarks

Study QuestionSubmission date: May 8, 2018

Sarah MATHESON, Reporter GeneralJonathan P. OSHA and Anne Marie VERSCHUUR, Deputy Reporters GeneralYusuke INUI, Ari LAAKKONEN and Ralph NACK, Assistants to the Reporter GeneralRegistrability of 3D trademarks

Responsible Reporter(s): Anne Marie VERSCHUUR

National/Regional Group

Belgium

Contributors name(s)

Emmanuel CORNU (president), Geert PHILIPSEN (reporter), Geoffrey FROIDBISE (reporter), Guillaume de VILLEGAS de CLERCAMP (reporter), Olivia SANTANTONIO

(reporter), Julie KEVER (reporter), Judith BUSSE

e-Mail contact

[email protected]

I. Current law and practice

Please answer the below questions with regard to your Group's current law and practice.

1. Are 3D Shapes* registrable as a trademark? Please answer YES or NO.

If you have answered NO, please skip Questions 2 to 9 and proceed to Question 10.

*This Study Question focuses on signs consisting of 3D shapes comprising solely the three-dimensional shape of goods or packaging without any addition (3D Shapes). (see further para. 12 of the Study Guidelines). Yes(Explanation is Optional)

Yes, 3D Shapes are registrable as a trademark. Indeed, Article 2.1.1 of the Benelux Convention on Intellectual Property (hereafter the "BCIP") explicitly lists the shapes of goods or packaging as one of the signs that may constitute a Benelux trademark provided that such a shape can be represented graphically and that it is able to distinguish an undertaking’s goods or services.

2. Can a 3D Shape be inherently distinctive? If YES, what test is applied in order to establish if it is inherently distinctive?YesWhat test is applied in order to establish if it is inherently distinctive?

Yes, a 3D Shape can be inherently distinctive.

The criteria for the assessment of the distinctive character of a 3D trademark consisting of a shape of a product are in principle no different from those applying to other categories of trademarks.[1]

In that context, the distinctive character of a 3D trademark must: first, be assessed by reference to the goods for which the registration has been applied for; and, second, by reference to the relevant public’s perception.[2] By relevant public, one must understand the average type of consumer of the goods in question, which is someone who is expected to be reasonably well informed as well as reasonably observant and circumspect.[3] This distinctiveness must be assessed at the time when the application for registration is filed.[4]

That being said, despite the foregoing, it is nonetheless consistent case-law from the CJEU that, when those criteria are applied in practice, account must be taken of the fact that the relevant public's perception is not necessarily the same in the case of a 3D trademark consisting of the shape of the product itself i.e. as it is in the case of, say, a word or figurative trademark consisting of a sign which is independent from the appearance of the products it denotes.[5] Therefore, according to the European Court of Justice, 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.[6] Hence, the European Court of Justice deems that it could prove more difficult to establish distinctiveness for such a 3D trademark than for a word or figurative mark.[7]

The Benelux Office for Intellectual Property goes even one step further: as a rule, a 3D trademark application will in principle be refused because of its ab initio lack of distinctiveness.[8]

Consequently, in those circumstances, the European Court of Justice – and followed by Belgian case-law – holds that only a 3D trademark which departs significantly from the sector’s norms or customs has the required distinctive character.[9] By contrast, the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood the shape lacks any distinctive character.[10]

Footnotes1. ^

ECJ, 29 April 2004, C-456/01 P and C-457/01 P, "Henkel KGaA / EUIPO", paragraph 38; ECJ, 7 October 2004, C-136/02, "Mag Instrument Inc. / EUIPO", paragraph 30; ECJ, 12 February 2006, C-173/04 P, "Deutssche SiSi-Werke GmbH & Co. Betriebs KG / EUIPO", paragraph 27; ECJ, 22 June 2006, C-24/05 P, "August Storck / EUIPO", paragraph 24; ECJ, 25 October 2007, C-238/06 P, "Develey Holding GmbH & Co. Beteiligungs KG / EUIPO", paragraph 80.2. ^

ECJ, 29 April 2004, C-456/01 P and C-457/01 P, "Henkel KGaA / EUIPO", paragraph 35; ECJ, 12 February 2006, C-173/04 P, "Deutssche SiSi-Werke GmbH & Co. Betriebs KG / EUIPO", paragraph 25; ECJ, 22 June 2006, C-24/05 P, "August Storck / EUIPO", paragraph 23; ECJ, 25 October 2007, C-238/06 P, "Develey Holding GmbH & Co. Beteiligungs KG / EUIPO", paragraph 79; ECJ, 24 May 2012, C-98/11 P, "Chocoladefabriken Lindt & Sprüngli AG / EUIPO", paragraph 41; President of the Commercial Court of Brussels, 29 October 2014, "Mars / Gedon Pet NV", Ing.-Cons., 2014/4, p. 703.3. ^

ECJ, 29 April 2004, C-456/01 P and C-457/01 P, "Henkel KGaA / EUIPO", paragraph 35; ECJ, 12 February 2006, C-173/04 P, "Deutssche SiSi-Werke GmbH & Co. Betriebs KG / EUIPO", paragraph 25; ECJ, 22 June 2006, C-24/05 P, "August Storck / EUIPO", paragraph 23.4. ^

President of the Commercial Court of Brussels, 29 October 2014, "Mars / Gedon Pet NV", Ing.-Cons., 2014/4, p. 702 with reference to ECJ, 23 April 2010, C-332/09, "EUIPO / Frosch Touristik GmbH – DSR touristik GmbH", paragraphs 41 and 42.

5. ^




Guidelines on the criteria for the examination of trademarks on absolute grounds, rule 5.3, available at www.boip.int/en/ip-professionals/regulations-policy/refusals/guidelines.9. ^

ECJ, 29 April 2004, C-456/01 P and C-457/01 P, "Henkel KGaA / EUIPO", paragraph 39; ECJ, 7 October 2004, C-136/02, "Mag Instrument Inc. / EUIPO", paragraph 31; ECJ, 12 February 2006, C-173/04 P, "Deutssche SiSi-Werke GmbH & Co. Betriebs KG / EUIPO", paragraph 31; ECJ, 22 June 2006, C-24/05 P, "August Storck / EUIPO", paragraph 26; ECJ, 25 October 2007, C-238/06 P, "Develey Holding GmbH & Co. Beteiligungs KG / EUIPO", paragraph 81; ECJ, 24 May 2012, C-98/11 P, "Chocoladefabriken Lindt & Sprüngli AG / EUIPO", paragraph 42; Antwerp Court of Appeal, 17 May 2010, "Nobel / Limar", I.R.D.I., 2011/1, p. 42; President of the Commercial Court of Brussels, 29 October 2014, "Mars / Gedon Pet NV", Ing.-Cons., 2014/4, p. 702; Commercial Court of Brussels, 23 December 2015, Capri Sun/Tropicalia, A/15/01184, IEFbe, 1655, p. 40 (www.IE-Forum.be).10. ^

ECJ, 29 April 2004, C-456/01 P and C-457/01 P, "Henkel KGaA / EUIPO", paragraph 39; ECJ, 7 October 2004, C-136/02, "Mag Instrument Inc. / EUIPO", paragraph 31.

3. Can a 3D Shape acquire distinctiveness? If YES, what test is applied in order to establish if it has acquired distinctiveness?YesWhat test is applied in order to establish if it has acquired distinctiveness?

Yes, a 3D Shape can acquire distinctiveness through use.

Whether inherent or acquired through use, the distinctive character of a 3D Shape must be assessed in relation to, on the one hand, the goods for which registration is applied for and, on the other hand, to the presumed expectations of an average consumer of the category of goods in question, with such a consumer being reasonably well-informed and reasonably observant and circumspect.[1]

The test, in substance, is whether the relevant public identifies the goods as originating from a particular undertaking because of the 3D trademark.[2] This assessment can be made on the basis of all the relevant circumstances of the case, namely inter alia: (i) that trademark’s market share, (ii) how intensive, geographically widespread and long-standing the use of the trademark has been, (iii) the amount invested by the concerned undertaking in the trademark’s promotion, (iv) the proportion of the relevant class of persons who, because of the trademark, identify the goods as originating from the particular undertaking, (v) statements from chambers of commerce and industry or other trade and professional associations.[3]

The relevant public’s identification of the 3D Shape as originating from a given undertaking must arise from the use of the 3D Shape as a trademark and thus as a result of its nature and effect, which make it capable of distinguishing the concerned 3D Shape from those of other undertakings.[4] Consequently, not every use of the 3D Shape necessarily qualifies as use as a trademark.[5]

Yet, such identification, and thus acquisition of a distinctive character, may be as a result both of the use, as part of a registered trademark, of a component thereof and of the use of a separate trademark in conjunction with a registered trademark.[6] In both cases, it is sufficient – but necessary – that, in consequence of such use, the relevant class of persons actually perceive the product, designated exclusively by the 3D trademark applied for, as opposed to any other trademark which might also be present, as originating from a given undertaking.[7]

Footnotes1. ^

ECJ, 18 June 2002, C-299/99, "Koninklijke Philips Electronics NV / Remington Consumer Products Ltd", paragraph 63; ECJ, 7 July 2005, C-353/03, " Société des produits Nestlé SA / Mars UK Ltd", paragraph 25.2. ^

ECJ, 18 June 2002, C-299/99, "Koninklijke Philips Electronics NV / Remington Consumer Products Ltd", paragraph 61.3. ^

ECJ, 18 June 2002, C-299/99, "Koninklijke Philips Electronics NV / Remington Consumer Products Ltd", paragraph 60.4. ^

ECJ, 18 June 2002, C-299/99, "Koninklijke Philips Electronics NV / Remington Consumer Products Ltd", paragraph 64; ECJ, 7 July 2005, C-353/03, "Société des produits Nestlé SA / Mars UK Ltd", paragraph 26.5. ^

ECJ, 22 June 2006, C-24/05 P, "August Storck / EUIPO", paragraph 62.6. ^

ECJ, 7 July 2005, C-353/03, "Société des produits Nestlé SA / Mars UK Ltd", paragraph 30.7. ^

ECJ, 7 July 2005, C-353/03, "Société des produits Nestlé SA / Mars UK Ltd", paragraph 30; ECJ, 16 September 2015, C-215/14, "Société des produits Nestlé SA / Cadbury UK Ltd", paragraph 67.

4. Will a 3D Shape be refused registration, or is a 3D Trademark* liable to be declared invalid, if it consists exclusively of the shape, or another characteristic, which results

from the nature of the goods themselves? If YES, please describe what test is applied.

*3D Shapes registered as trademarks (see also para. 14 of the Study Guidelines)YesPlease describe what test is applied.

Yes, a 3D Shape will be refused registration and a 3D Trademark is liable to be declared invalid if it consists exclusively of the shape, or another characteristic, which results from the nature of the goods themselves.

Reference should be made to Article 2.1 (2) of the BCIP which provides that “signs consisting solely of a shape which results from the nature of the goods…cannot be considered as being trademarks”.

Article 2.28 BCIP must also be pointed out as it provides that any interested party may invoke the nullity of the “registration of a sign which cannot constitute a trademark as defined in Article 2.1(1) and (2)”.

Article 2.1 (2) BCIP will have to be amended to comply with Article 4, §1, e), i) of the Directive 2015/2436 of 16 December 2015 to approximate the laws of the Member States relating to trade marks (hereafter “the Trade Marks Directive”). This Article provides that not only the signs consisting exclusively of the shape which results from the nature of the goods themselves, but also those consisting exclusively of another characteristic which results from the nature of the goods themselves may not be registered or, if registered, may be liable to be declared invalid. Article 4, §1, e) thus broadens the scope of the absolute ground for refusal or invalidity.

This ground of refusal will first apply when the sign consists exclusively of the only natural shape of the good, i.e. natural products that have no substitute.

The same would apply to regulated products, i.e. the shape or other characteristic of which is prescribed by legal standards.

Previously there was some debate about whether the ground only applied when no alternative shapes were available for the products covered by the trademark. This was resolved by the CJEU in the Hauck v Stokke case (C-205/13), in which the protection of the famous Tripp-Trapp kid’s chair was at issue.

In that case, the CJEU ruled that all shapes that are inherent to the generic function or functions of such goods must, in principle, also be denied registration:

“21 Consequently, in order to apply the first indent of Article 3(1)(e) of the trade marks directive correctly, it is necessary to identify the essential characteristics — that is, the most important elements — of the sign concerned on a case-by-case basis, that assessment being based either on the overall impression produced by the sign or on an examination of each the components of that sign in turn (see, to that effect, judgment in Lego Juris v OHIM, EU:C:2010:516, paragraphs 68 to 70).

22 In that regard, it must be emphasised that the ground for refusal of registration set out in the first indent of Article 3(1)(e) of the trade marks directive cannot be applicable where the trade mark application relates to a shape of goods in which another element, such as a decorative or imaginative element, which is not inherent to the generic function of the goods, plays an important or essential role (see, to that effect, judgment in Lego Juris v OHIM, EU:C:2010:516, paragraphs 52 and 72).

23 Thus, an interpretation of the first indent of that provision whereby that indent is to apply only to signs which consist exclusively of shapes which are indispensable to the function of

the goods in question, leaving the producer of those goods no leeway to make a personal essential contribution, would not allow the objective of the ground for refusal set out therein to be fully realised.

24 Indeed, an interpretation to that effect would result in limiting the products to which that ground for refusal could apply to (i) ‘natural’ products (which have no substitute) and (ii) ‘regulated’ products (the shape of which is prescribed by legal standards), even though signs consisting of the shapes formed by such products could not be registered in any event because of their lack of distinctive character.

25 Instead, when applying the ground for refusal set out in the first indent of Article 3(1)(e) of the trade marks directive, account should be taken of the fact 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.

26 As the Advocate General indicated in point 58 of his Opinion, 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, it is clear that 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.

27 Consequently, the answer to the first question is that the first indent of Article 3(1)(e) of the trade marks directive must be interpreted as meaning that the ground for refusal of registration set out in that provision may apply to a sign which consists exclusively of the shape of a product with one or more essential characteristics which are inherent to the generic function or functions of that product and which consumers may be looking for in the products of competitors” (CJEU, 18/09/2014, C-205/13, Hauck, EU:C:2014:2233, §§ 21-27).

The Court therefore confirmed that the ground of refusal can apply even if the shape is not indispensable to the function of the goods. It is the case with shapes having essential characteristics which are inherent to the generic function of products of the same category. The threshold for overcoming this ground of refusal has therefore been increased.

The CJEU has not given any further guidance about exactly when a shape is inherent to the generic function(s) of goods.

There is no case yet where a trade mark consists of “other characteristics” that result from the nature of the goods.

5. Will a 3D Shape be refused registration, or is a 3D Trademark liable to be declared invalid, if it consists exclusively of the shape, or another characteristic, of goods which is necessary to obtain a technical result? If YES, please describe what test is applied.YesPlease describe what test is applied.

6. Will a 3D Shape be refused registration, or is a 3D Trademark liable to be declared invalid, if it consists exclusively of the shape, or another characteristic, which gives substantial value to the goods? If YES, please describe what test is applied.YesPlease describe what test is applied.

a) Yes, a 3D Shape will be refused registration and a 3D Trademark is liable to be declared invalid if it consists exclusively of the shape, or another characteristic, which gives substantial value to the goods.

Article 2.1 (2) BCIP provides that “signs consisting solely of a shape […] which gives a substantial value to the goods […] cannot be considered as being trademarks” while Article 2.28 BCIP provides that any interested party may invoke the nullity of the “registration of a sign which cannot constitute a trademark as defined in Article 2.1(1) and (2)”.

As explained above, Article 2.1 (2) BCIP will have to be amended to comply with Article 4, §1, e), iii) of the Trade Marks Directive. This Article provides that not only the signs consisting exclusively of the shape which gives substantial value to the goods, but also those consisting exclusively of another characteristic which gives substantial value to the goods may not be registered or, if registered, may be liable to be declared invalid. Article 4, §1, e) thus broadens the scope of the absolute ground for refusal or invalidity.

b) Case-law from the CJEU explains how Article 2.1 (2) BCIP should be interpreted.

The CJEU pointed out that not only product shapes having artistic or ornamental value are excluded from trademark protection, but also such shapes which have a significant aesthetic element (CJEU, 18/09/2014, C-205/13, Hauck, EU:C:2014:2233).

The concept of value should be interpreted not only in economic terms, but also in terms of attractiveness, more specifically in terms of the likelihood that the goods will be purchased primarily because of their particular shape (or due to another particular characteristic).

The concept of value cannot be limited purely to the shape or other characteristic of goods having only artistic or ornamental value (judgment of 18/09/2014, C-205/13, Hauck, EU:C:2014:2233, § 29-32). According to the CJEU, other characteristics which give the product significant value, such as functional value (for instance safety, comfort and reliability), should also be taken into consideration (CJEU, 18/09/2014, C-205/13, Hauck, EU:C:2014:2233, § 31).

In assessing the value of the goods, the CJEU has ruled “that 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” (CJEU, 18/09/2014, C-205/13, Hauck, EU:C:2014:2233, § 35).

The fact that the shape performs, in addition to its aesthetic function, also other functions (e.g. functional functions) does not exclude the application of this ground for refusal or invalidity (CJEU, 18/09/2014, C-205/13, Hauck, EU:C:2014:2233, § 31).

A case-by-case approach is necessary: there must be evidence that the value of the shape (or of another characteristic)[1] can, in its own right, determine, to a large extent, the commercial value of the product and the consumer’s choice.

Reference must also be made to the Loudspeaker case (GCEU, 06/10/2011, T-508/08, Loudspeaker, EU:T:2011:575). The case was about the following trademark application:

In that case, the General Court held that for goods such as those noted above, the design was an element that would be very important in the consumer’s choice even if the consumer took other characteristics of the goods at issue into account. The General Court ruled as follows:

“73 In the present case, with regard to the application of Article 7(1)(e)(iii) of Regulation No 40/94, it must be noted that, for the goods at issue, the design is an element which will be very important in the consumer’s choice even if the consumer also takes other characteristics of the goods at issue into account.

74 Indeed, the shape for which registration was sought reveals a very specific design and the applicant itself admits, at paragraph 92 of the application in particular, 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.

75 Furthermore, it is apparent from the evidence referred to at point 33 of the contested decision, namely extracts from distributors’ websites and on-line auction or second-hand websites, that the aesthetic characteristics of that shape are emphasised first and that the shape is perceived as a kind of pure, slender, timeless sculpture for music reproduction, which makes it an important selling point.

76 It does not therefore appear that, in the present case, the Board of Appeal committed any error in holding that, independently of the other characteristics of the goods at issue, the shape in respect of which registration was sought gives substantial value to the goods concerned.

77 It must be added that the fact that the shape is considered to give substantial value to the goods does not preclude other characteristics of the goods, such as the technical qualities here, from also conferring considerable value on the goods at issue.

78 The Board of Appeal was therefore fully entitled to conclude that the sign at issue fell within the scope of Article 7(1)(e)(iii) of Regulation No 40/94” (Emphasis added).

The current CJEU case-law can be summarised as follows: it is important to determine whether the value of a shape (or other characteristic) can, in its own right, determine the commercial value of the product and, to a large extent, the consumer’s choice.

It is therefore irrelevant to determine whether the overall value of the product is also affected by other factors, if the value contributed by the shape (or other characteristic) itself is substantial.

c) Finally, the Louboutin case (CJEU, Case C?163/16, Christian Louboutin, Christian Louboutin SAS v. Van Haren Schoenen BV) must also be noted.

On 28 December 2009, Louboutin lodged an application for a trade mark which led to the registration, on 6 January 2010, for goods in Class 25, namely ‘footwear (other than orthopaedic footwear)’, of the Benelux trade mark No 0874489.

The trademark is described as consisting ‘of the colour red (Pantone 18 1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark)’, as reproduced below:

Van Haren operates shoe retail outlets in the Netherlands. In 2012, Van Haren sold high-

heeled women’s shoes with red soles. Louboutin brought proceedings before the District Court of The Hague.

According to Van Haren, the contested mark was the colour red which, when applied to the soles of shoes, conformed to the shape of the shoes and gave them substantial value.

The District Court of The Hague considered that the mark at issue was inextricably linked to the sole of a shoe. It pointed out that it was unclear whether the concept of shape, within the meaning of Article 3(1)(e)(iii) of Directive 2008/95, was limited to three-dimensional properties of the goods, such as their contours, measurements and volume, to the exclusion of colours.

In those circumstances, the District Court of The Hague decided to stay the proceedings and to refer the following question to the CJEU for a preliminary ruling:

‘Is the notion of ‘shape’ within the meaning of Article 3(1)(e)(iii) of Directive 2008/95 ... limited to the three-dimensional properties of the goods, such as their contours, measurements and volume (expressed three-dimensionally), or does it include other (non three-dimensional) properties of the goods, such as their colour?’

The Advocate General submitted his first Opinion on 22 June 2017:

“65. Having regard to all of those observations, I consider that Article 3(1)(e) of Directive 2008/95 does potentially apply to signs consisting of the shape of the goods which seek protection for a certain colour. […]

69. The application of the ground in question is based on an objective analysis, the purpose of which is to show that the aesthetic characteristics of the shape at issue affect the attractiveness of the goods to such an extent that the reservation thereof to a single undertaking would distort competition on the market concerned. The consumer’s perception of the shape concerned is not the decisive criterion in that analysis, which potentially includes a range of factual matters.

70. Furthermore, the analysis relates exclusively to the intrinsic value of the shape, and must take no account of attractiveness of the goods flowing from the reputation of the mark or its proprietor.

71. It must be borne in mind that the provision in question is designed to prevent the monopolisation of external features of goods which are essential to their market success, and thus to prevent the protection conferred by the mark being used to gain an unfair advantage; that is, an advantage which does not result from competition based on price and quality.

72. On the other hand, the application of the provision is not justified where the advantage does not result from the intrinsic characteristics of the shape, but from the reputation of the mark or its proprietor. Indeed, the possibility of acquiring such a reputation is an important aspect of the system of competition which trade mark law helps to maintain”.

The Advocate General then concluded as follows

“Article 3(1)(e)(iii) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks is to be interpreted as being capable of applying to a sign consisting of the shape of a product and seeking protection for a certain colour. The concept of a shape which ‘gives substantial value’ to the goods, within the meaning of that provision, relates only to the intrinsic value of the shape, and does not permit the reputation of the mark or its proprietor to be taken into account”.

In his first Opinion, the Advocate General suggested that it is not the shape (colour applied to the sole) that gives substantial value to the goods, but it is rather the distinctive character of the trade mark and its reputation that make the goods in question attractive.

Instead of issuing a judgment, the Chamber of the CJEU to which the case had been originally assigned considered that the case has raised questions of principle involving EU trade mark law and decided to reassign the case to the Grand Chamber. The Advocate General was then asked to deliver a new Opinion in the case, which he did on 6 February 2018.

In this second Opinion, the Advocate General confirmed his view that what is at stake is not protection of a colour as such, but rather a colour that has a certain spatial delimitation (that of the shoe sole to which it is attached).

The Advocate General then indicated that the ground of refusal can be potentially interpreted as meaning that it applies in the case of a sign consisting of the shape (or another characteristic) of the goods and which seeks protection for a certain colour.

Regarding the “substantial value” ground, the Advocate General continued by stressing that:

“the fact that the characteristics giving substantial value to the goods are, in part, determined by the public’s perception does not, in my view, mean that account may be taken of the reputation of the trade mark or its proprietor as part of the assessment to determine whether the shape at issue ‘gives substantial value to the goods’ within the meaning of Article 3(1)(e)(iii) of Directive 2008/95. Indeed, if the concept of a ‘shape [giving] substantial value to the goods’ were to be acknowledged as being, even in part, determined by characteristics which are perceived as attractive by the public, it would then be necessary to exclude the characteristics linked to the reputation of the trade mark or its proprietor, in order to prevent the appeal created by that reputation being attributed to a shape which, taken on its own, would not be attractive. Otherwise, the ground for refusal or invalidity laid down in Article 3(1)(e)(iii) of Directive 2008/95 could be interpreted very broadly and improperly having regard to its objective”.

Holding to his previous position, the Advocate General concluded once again that “The concept of a shape which ‘gives substantial value’ to the goods, within the meaning of that provision, relates only to the intrinsic value of the shape, and does not permit the reputation of the mark or its proprietor to be taken into account”.

This Opinion is of course not binding on the CJEU, and it will be interesting to see whether and to what extent the CJEU will follow this Opinion.

Footnotes1. ^

If a shape (or other characteristic) derives its appeal from the fame of its designers and/or marketing efforts rather than from the aesthetic value of the shape or other characteristic itself, the ground for refusal or invalidity will not apply.

7. Is there any other ground of absolute refusal or invalidity specific to 3D Shapes or 3D Trademarks available under your Group's current law?No

(Explanation is Optional)

No, there is no other ground of absolute refusal or invalidity specific to 3D Shapes or 3D Trademarks available under our Group's current law.

If you have answered NO to each of Questions 4, 5, 6 and 7 proceed to Question 10.

If you have answered YES to any one of Questions 4, 5, 6, or 7, please answer Questions 8 and 9 in relation to the relevant refusal / invalidity ground(s).

8. Do the refusal / invalidity grounds referred to in Questions 4, 5, 6 and/or 7, to the extent available in your Group's jurisdiction, operate independently from one another or may they also apply in combination? For example, do they apply if certain characteristics of the 3D Shape give substantial value to the goods and the others result from the nature of the goods?Yes, the refusal / invalidity grounds referred to in Questions 4, 5 and 6 operate independently from one another.

In the “Stokke” case[1], the CJEU ruled on that issue as follows:

“it is clear from this wording that the three grounds for refusal of registration set out in that provision[2] operate independently of one another: the fact that they are set out as successive points, coupled with the use of the word ‘exclusively’, shows that each of those grounds must be applied independently of the others. Thus, if any one of the criteria listed in Article 3(1)(e) of the trade marks directive is satisfied, a sign consisting exclusively of the shape of the product or of a graphic representation of that shape cannot be registered as a trade mark (judgment in Philips, EU:C:2002:377, paragraph 76, and judgment in Benetton Group, C?371/06, EU:C:2007:542, paragraph 26, third indent). In that regard, the fact that the sign in question could be denied registration on the basis of a number of grounds for refusal is irrelevant so long as any one of those grounds fully applies to that sign. In addition, it must be pointed out that (…) the public interest objective underlying the application of the three grounds for refusal of registration set out in Article 3(1)(e) of the trade marks directive precludes refusal of registration where none of those three grounds is fully applicable. In those circumstances (…) Article 3(1)(e) of the trade marks directive must be interpreted as meaning that the grounds for refusal of registration set out in the first and third indents of that provision may not be applied in combination”. (Emphasis added)

Footnotes1. ^

ECJ, 18 September 2014, C-305/13, « Stokke», paragraphs 39-43;2. ^

Article 3 (1) (e) of the Directive 89/104/EEC provides that “ (e) signs which consist 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.” Please note that in the meantime Article 3 (1) (e) of the Directive 89/104/EEC has been replaced by Article 4 (1) (e) of the Directive (EU) 2015/2436 of 16 December 2015 to approximate the laws of the Member States relating to trade marks but the content of the provision remains the same.

9. Which, if any, of the refusal / invalidity grounds referred to in Questions 4, 5, 6 and 7, to the extent available in your Group's jurisdiction, can be overcome by acquired distinctiveness?None of the refusal / invalidity grounds referred to in Questions 4, 5 and 6 can be overcome by acquired distinctiveness.

II. Policy considerations and proposals for improvements of your current law10. Could any of the following aspects of your Group's current law be improved? If YES, please explain.

10.a. Registrability (or lack thereof) of 3D ShapesYesPlease Explain

The Belgian Group sees no need for amendments to the present regulation regarding the principle of registrability. However, reference is made to the answer to question 11 regarding the filing of 3D shapes as trademarks.

10.b. The test applied, if any, in relation to the registrability (based on inherent and/or acquired distinctiveness) referred to in Question 10(a)No(Explanation is Optional)

The Benelux legal system does not distinguish, when it comes to inherent and/or acquired distinctiveness, between 3D trademarks or other kinds of trademarks, except for the requirement of a more elevated threshold to assess the required distinctiveness.[1] In the Belgian Group’s opinion no distinction should be made between 3D trademarks and other trademarks. Hence, there are no proposals for improvement.

Footnotes1. ^

See ECJ, 29 April 2004, joint cases C-456/1 and 457/1 (Henkel), www.curia.eu.

10.c. The refusal / invalidity grounds, if any, referred to in Questions 4 to 7 (and potential combination thereof)YesPlease Explain

The Belgian Group sees no substantial reasons to amend the present legal framework regarding the grounds for refusal or invalidity of 3D shapes. However, some lack of clarity seems to have arisen relating to the content of the concept “shape”, more specifically relating to the question whether a colour applied to a shape is also to be considered a “shape” in the

sense of the specific grounds for refusal relating to shapes. Clarity is expected from the ongoing case of Christian Louboutin and Christian Louboutin SAS versus Van Haren Schoenen BV, which is currently pending before the CJEU.[1]

In 1991, the content of the concept “shape” was clarified by the Benelux Court of Justice in response to several questions asked by the Court of Appeal of The Hague.[2] In this case, the question arose about whether the invalidity ground applied to the shape marks could also apply to two-dimensional trademarks, such as, in casu, the famous “Burberry tartan” (the “tartan” is a figurative trademark, a specific pattern, which is affixed on a fabric). In its judgment of 16 December 1991, the Benelux Court of Justice held figurative trademarks could not be subject to the refusal/invalidity grounds, which only apply to three-dimensional trademarks. Thus, following the Benelux Court’s ruling, whereas a three-dimensional trademark would be refused registration or declared invalid if conferring substantial value, for instance, to the good, by contrast a pattern – figurative trademark - conferring the same value would, provided it is distinctive, be registered/declared valid.[3]

Footnotes1. ^

ECJ, case C-163/16.2. ^

Benelux Court of Justice, 16 December 1991, A 90/4/11, Burberry’s II, J.T., 1992, p. 617.3. ^

F. de VISSCHER, note under Benelux Court of Justice, 16 December 1991, A 90/4/11, Burberry’s II, J.T., 1992, p. 621.

10.d. The possibility or lack thereof to overcome these refusal / invalidity grounds by acquired distinctiveness.No(Explanation is Optional)

The Belgian Group sees no reason to amend the current legal framework in this regard.

11. Are there any other policy considerations and/or proposals for improvement to your Group's current law falling within the scope of this Study Question?YesPlease Explain

There might be some lack of clarity, and therefore some reason for improvement, regarding the administrative requirements relating to the filing of 3D marks. The BCIP’s Executing Rules merely state that the filing party must state whether the sign is filed as a wordmark, a figurative mark, a combined word-figure mark, a shape mark or any other kind of mark (rule 1.1.1.e). No further instructions are given on how the 3D mark is to be represented at the filing. At the EU-level, the implementing regulation[1] states, in article 3, paragraph 3, sub c, that the mark shall be represented by submitting either a graphic reproduction of the shape, including computer-generated imaging, or a photographic reproduction. The graphic or photographic reproduction may contain (up to six) different views. Despite this clarification, it still seems that confusion may arise between 3D shape trademarks, 2D trademarks holding a representation of a 3D shape, position marks or even colour marks.[2] Whereas a description is not required (this requirement is only stipulated for patterns, position marks, colour

combinations or motion marks), recent case law of the CJEU seems to award some degree of importance to such a description for 3D marks.[3] In view of the specific grounds for refusal relating to shapes it might be advisable to further designate the requirements for the filing of 3D marks.

Footnotes1. ^

Commission implementing regulation (EU) 2017/1431 of 18 May 2017 laying down detailed rules for implementing certain provisions of Council Regulation (EC) No 207/2009 on the European Union trade mark.2. ^

See, for example, C-136/16 (mentioned above).3. ^

ECJ, 10 November 2016, C-30/15P, “Simba Toys GmbH & Co KG / EUIPO and Seven Towers Ltd”, paragraph 48.

III. Proposals for harmonisation

Please consult with relevant in-house / industry members of your Group in responding to Part III.

12. Does your Group consider that harmonisation in any or all areas described in the response to Question 10 or 11 above is desirable? Please answer YES or NO.

If YES, please respond to the following questions without regard to your Group's current law or practice.

Even if NO, please address the following questions to the extent your Group considers your Group's current law or practice could be improved. YesPlease Explain

Yes, our Group considers that harmonisation in any or all areas described in response Question 10 or 11 above is desirable.

13. Does your Group consider that 3D Shapes should be registrable as a trademark? Please answer YES or NO.YesPlease Explain

Yes, our Group considers that 3D Shapes should be registrable as a trademark.

14. Should it be possible for a 3D Shape to be inherently distinctive? If YES, what test should be applied in order to establish if it is inherently distinctive?YesWhat test should be applied in order to establish if it is inherently distinctive?

Yes, it must be possible for a 3D Shape to be inherently distinctive. Our group believes that in principle no distinction should be made to assess distinctiveness between 3D shapes and other kinds of trademarks.

The CJEU’s case law is however restrictive concerning the possibility for a 3D trade mark to have a ab initio distinctive character.

Even if the Court of Justice recalls that the criteria for assessing the possibility of three-dimensional marks consisting of the shape of the product itself are no different from those applying to other categories of trade mark, it nonetheless considers that, for the purpose of applying those criteria, the relevant public's perception is not necessarily the same for both ‘types’ of signs. In fact, according to the Court, the “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”.[1] Consequently, in those circumstances, the European Court of Justice – followed by the Belgian case-law – holds that only a 3D trademark which departs significantly from the norm or customs of the sector has the required distinctive character.[2] Conversely, the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood the shape lacks any distinctive character.[3] Part of the Group has the opinion that this a priori assumption is incorrect and does not seem to rely either on market reality or on the consumer’s natural perception.

The BOIP is even more severe, considering a 3D trademark application should in principle be refused because of its ab initio lack of distinctiveness.[4] The Belgian Group’s opinion is that this approach is too restrictive. Such a policy should be changed as it does not seem to fully comply with the CJEU’s case-law. The Belgian Group will defend any initiative in that direction.

Given the assessment of the different grounds of refusal, one might argue (and part of the Group does) it has become quite difficult to register 3D trademarks. Even if the 3D Shape is not considered to fall within the scope of one of the specific grounds of refusal (such as the sign exclusively consisting of the shape necessary for obtaining the technical result), the sign can thus still be considered as lacking distinctiveness.[5]

Thus, 3D trade marks in practice often struggle to be registered.[6]

Footnotes1. ^

ECJ, 12 February 2004, C-218/01, “Henkel”, paragraph 52; ECJ, 7 October 2004, C-136/02P, “Mag Instrument Inc.”, paragraph 30.2. ^

ECJ, 29 April 2004, C-456/01 P and C-457/01 P, "Henkel KGaA / EUIPO", paragraph 39; ECJ, 7 October 2004, C-136/02, "Mag Instrument Inc. / EUIPO", paragraph 31; ECJ, 12 February 2006, C-173/04 P, "Deutssche SiSi-Werke GmbH & Co. Betriebs KG / EUIPO", paragraph 31; ECJ, 22 June 2006, C-24/05 P, "August Storck / EUIPO", paragraph 26; ECJ, 25 October 2007, C-238/06 P, "Develey Holding GmbH & Co. Beteiligungs KG / EUIPO",

paragraph 81; ECJ, 24 May 2012, C-98/11 P, "Chocoladefabriken Lindt & Sprüngli AG / EUIPO", paragraph 42; Antwerp Court of Appeal, 17 May 2010, "Nobel / Limar", I.R.D.I., 2011/1, p. 42; President of the Commercial Court of Brussels, 29 October 2014, "Mars / Gedon Pet NV", Ing.-Cons., 2014/4, p. 702; Commercial Court of Brussels, 23 December 2015, Capri Sun/Tropicalia, A/15/01184, IEFbe, 1655, p. 40 (www.IE-Forum.be).3. ^

ECJ, 29 April 2004, C-456/01 P and C-457/01 P, "Henkel KGaA / EUIPO", paragraph 39; ECJ, 7 October 2004, C-136/02, "Mag Instrument Inc. / EUIPO", paragraph 31.4. ^

Guidelines on the criteria for the examination of trademarks on absolute grounds, rule 5.3, available at www.boip.int/en/ip-professionals/regulations-policy/refusals/guidelines.5. ^

ECJ, 12 January 2006, C-173/04P, Deutsche SiSi-Werke/BHIM, ECLI:EU:C:2006:20.6. ^

See also J. BUSSE, “De (bittere) nasmaak van vormmerken”, note under Court of Appeal of Brussels, 27 January 2015, Kraft Foods/Natrajacali, RABG, 2015, book 18, p. 1292, specifically paragraphs 12 and 13.

15. Should it be possible for a 3D Shape to acquire distinctiveness? If YES, what test should be applied in order to establish if it has acquired distinctiveness?YesWhat test should be applied in order to establish if it has acquired distinctiveness?

Yes, it should be possible for a 3D Shape to acquire distinctiveness through use. The test that should be applied is the one already developed by the CJEU in its case-law as set out under Question 3.

16. Should a 3D Shape be refused, or a 3D Trademark be liable to be declared invalid, if it consists exclusively of the shape, or another characteristic, which results from the nature of the goods themselves? If YES, please describe what test should be applied.YesPlease describe what test should be applied.

Yes, a 3D Shape should be refused or a 3D Trademark be liable to be declared invalid if it consists exclusively of the shape, or another characteristic, which results from the nature of the goods themselves.

This ground of refusal should apply to:

l the shapes (or other characteristics) indispensable to the goods’ function; andl the shapes (or other characteristics) which are inherent to the generic function of products of the same category.

17. Should a 3D Shape be refused, or a 3D Trademark be liable to be declared invalid, if it consists exclusively of the shape, or another characteristic, of goods which is necessary to obtain a technical result? If YES, please describe what test should be applied.Yes

Please describe what test should be applied.

A 3D Shape should in fact be refused or be liable to be declared invalid, if it consists exclusively of the shape, or another characteristic, of goods which is necessary for obtaining a technical result.

Technical solutions should, in fact, after the expiry of the specific time-limited protection (i.e. patent protection) be freely accessible.[1]

The provisions under the Trade Marks Directive (Article 4, §1, e), ii)) and under the Regulation 1001/2017 of 14 June 2017 on the European Union trade mark (Article 7, §1, e), ii)) take, in the Group’s view, appropriate account of the aims pursued by this ground of refusal. The aim of this provision is to prevent enterprises from perpetuating the protection of a technical solution, after the expiry of the patent protection and without limit in time, through a trade mark registration.[2]

The CJEU has, furthermore, established an adequate balance between the interests at stake. The test set out under question 5 seems appropriate to the Group.

Footnotes1. ^

Under Belgian law, once the patent has expired, the technical solution may solely be protected by the unfair competition law, under Article VI.104 of the Belgian code of economic law. The Belgian Supreme Court (Cass., 29 May 2009, “Noël Marquet”, Ann. prat. comm., 2009, p. 325) has assigned a very narrow scope of application to that provision.2. ^

ECJ (Grand Chamber), 14 September 2010, C-48/09P, Lego Juris/EUIPO – Mega Brands Inc., paragraph 56.

18. Should a 3D Shape be refused, or a 3D Trademark be liable to be declared invalid, if it consists exclusively of the shape, or another characteristic, which gives substantial value to the goods? If YES, please describe what test should be applied.YesPlease describe what test should be applied.

Yes, a 3D Shape should be refused or a 3D Trademark be liable to be declared invalid if it consists exclusively of the shape, or another characteristic, which gives substantial value to the goods.

This ground of refusal should apply when the shape (or another characteristic) can, in its own right, determine the commercial value of the product and the consumer’s choice to a large extent.

The value of the goods should be assessed by taking into account the following (non-exhaustive) criteria: 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.

The analysis relates exclusively to the intrinsic value of the shape (or of another

characteristic).[1]

Indeed, when assessing if a shape (or another characteristic) gives substantial value to the goods, the characteristics linked to the reputation of the trade mark or its proprietor should be excluded.

Otherwise, the appeal created by that reputation would be attributed to a shape which, taken on its own, would not be attractive.

Such an interpretation would broaden the ground for refusal or invalidity and would be detrimental to trademark owners who have invested to create that reputation.

Footnotes1. ^

See Botis, D., Maniatis, S., von Mühlendahl, A., Wiseman, I., Trade Mark Law in Europe (3rd ed.), Oxford University Press 2016, p. 239.

19. Should there be any other absolute refusal or invalidity ground specific to 3D Shapes or 3D Trademarks? If YES, please explain briefly.No(Explanation is Optional)

No, in our Group’s view there should not be any other absolute refusal or invalidity ground specific to 3D Shapes or 3D Trademarks.

If you have answered NO to each of Questions 16, 17, 18 and 19, please skip Questions 20 and 21 and proceed to Question 22.

If you have answered YES to any one of Questions 16, 17, 18 or 19, please answer Questions 20 and 21 in relation to the relevant refusal / invalidity ground(s).

20. Should the refusal / invalidity grounds referred to in Questions 16, 17, 18 and/or 19 operate independently from one another or should it also be possible to apply them in combination? For example, should they also apply if certain characteristics of the 3D Shape give substantial value to the goods and the others result from the nature of the goods?In the Belgian Group’s opinion the grounds for refusal / invalidity should operate independently of one another.

The fact that a sign could be denied registration (or be declared invalid) on the basis of a number of grounds for refusal should be irrelevant so long as any one of those grounds fully applies to that sign.

21. Which, if any, of the refusal / invalidity grounds referred to in Questions 16, 17, 18 and 19 should (and thus may) be overcome by acquired distinctiveness?None of the refusal / invalidity grounds referred to in Questions 16, 17, 18 and 19 can be overcome by acquired distinctiveness.

22. Please comment on any additional issues concerning the registrability of 3D Trademarks and the refusal / invalidity grounds mentioned above that are within the scope of this Study Question (as described in paragraphs 11 to 13 of the Study Guidelines), and that you consider relevant to this Study Question/

23. Please indicate which industry sector views are included in your Group's answers to Part III./

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