The European Court of Justice (ECJ) passed a judgment in a case where the ECJ was referred to by Supreme Court of the Netherlands to decide on the construction of Article 3(1)(e) of the Trademarks Directive, namely the exclusion stating that the signs which consist exclusively of (i) the shape which results from the nature of the goods themselves, or (ii) the shape of goods which is necessary to obtain a technical result, or (iii) the shape which gives substantial value to the goods, shall not be registered or registered shall be liable to be declared invalid.
The question on the construction of the directive has arisen when a 3D trademark (a visual image of a children’s chair) was registered as a trademark in the Benelux Office and other entities challenged the registration on the basis referred to hereinabove.
The ECJ explained that the 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.
The Supreme Court of the Netherlands expressed doubts regarding the interpretation of that provision, which stem from the fact that, according to that court, regardless of the shape of the “Tripp Trapp” chair giving it significant aesthetic value, it has other characteristics as well (safety, comfort and reliability) which give it essential functional value. Consequently, the ECJ explained that ‘shape which gives substantial value to the goods’ cannot be limited purely to the shape of products having only artistic or ornamental value, as there would otherwise be a risk of the products possessing an essential functional characteristics as well as a significant aesthetic element not being covered. In that case, the right conferred by the trade mark on its proprietor would grant that proprietor a monopoly on the essential characteristics of such products, which would not allow the purpose behind that ground for refusal to be fully realised.
The recent judgment should help determine the new guidelines for examination of registration of 3D trademarks as well as assist in adopting the resolutions in disputes where validity of a 3D trademark is in question.