ECJ clarifies criteria for national shape marks

In a case referred by the German Patent Court, the European Court of Justice (ECJ) has ruled that where the nature of the products means that they have to be packaged, the shape of the packaging can be considered to be the shape of the product itself under Article 3(1)(e) of the Community Trademark Directive.

Henkel filed an application in Germany to register as a trademark the three-dimensional shape of a bottle for wool detergent. The German Patent and Trademark Office refused the application on the grounds that the shape was common for this type of product and lacked distinctiveness. Henkel appealed to the Federal Patent Court.

The Federal Patent Court has established in its case law that, to be registrable, three-dimensional shape marks must include additional and distinctive elements, and leave adequate scope for competitors to produce alternative forms. However, this practice has been criticized as it seems to include an examination of the originality and individuality of a shape, which although relevant to design patents or copyright, is foreign to trademark law.

In order to clarify whether shape marks require stricter criteria than other marks as regards distinctiveness, the court referred the case to the ECJ for a preliminary ruling. In particular, the court sought clarification as to whether (i) for products that can only be sold packaged, the shape of the packaging can be considered to be the shape of the product itself pursuant to Article 3(1)(e) of the directive, and (ii) a national office must check ex officio whether similar trademarks have been registered in other EU member states.

The ECJ ruled that three-dimensional trademarks consisting of the reproduction of the product or its packaging without any additional elements have to fulfil the same criteria as all trademarks. The consumer must be able to recognize them as indicators of origin and not only as indicators of a specific form of the product. If a product cannot be traded without its packaging, the shape of the packaging can be regarded as the shape of the product itself, and thus is precluded from registration under Article 3(1)(e) of the directive.

The ECJ also found that distinctiveness in an EU member state must be decided on the basis of the commercial practice in that country, not on whether the mark was registered in other EU member states. Accordingly, a national office may take similar trademarks into consideration but need not check ex officio whether there are similar cases in the other member states.

Tanja Hogh Holub, Beiten Burkhardt, Munich