Law on three-dimensional marks knocked into shape by ECJ

In the joined cases of Linde AG, Winward Industries Inc and Rado Uhren AG, which were referred by the German Supreme Court, the European Court of Justice (ECJ) has ruled that, pursuant to the Community Trademark Directive, the assessment of the distinctive character of three-dimensional shape marks depicting specific products is not stricter than that used for other types of trademark but that these shape marks must overcome a number of additional barriers to registration.

In the first case, Linde sought registration of a vehicle shape as a three-dimensional mark for motorized vehicles, particularly forklift trucks. In the second case, Winward sought registration of a torch shape as a three-dimensional mark. In the third, Rado Uhren sought to register a graphic representation of a wristwatch. All three applications were refused for lack of distinctive character. On appeal, the German Supreme Court referred the cases to the ECJ for a preliminary ruling.

The German court first asked whether the test for distinctive character under Article 3(1)(b) of the Community Trademark Directive is stricter for three-dimensional shape marks depicting a particular product than for other forms of trademark. The court also asked whether, in the case of such three-dimensional marks, Article 3(1)(c) of the directive has any significance independent of Article 3(1)(e). If so, when considering each of these provisions, should the registration of three-dimensional marks depicting a product be refused, unless the mark has acquired distinctiveness through use, on the grounds that it is in the interest of the trade to keep the shape of the product available for use?

The ECJ noted that Article 3(1)(e) explicitly lists a number of grounds preventing the registration of certain product shape signs. Following refusal on those grounds, a shape can never acquire distinctive character through use. If a shape mark depicting a product overcomes this preliminary obstacle, stated the ECJ, it is still necessary to ascertain whether it should be refused registration under the grounds for refusal in Articles 3(1)(b) to (d). However, in answer to the first question, the ECJ held that the tests for assessing distinctiveness in those articles are not stricter for shape of product marks than for other categories of trademark

Moving to the second question, the ECJ found that Article 3(1)(c) does have independent significance for three-dimensional shape marks. It also ruled that all of the grounds for refusing registration set out in Article 3 must be interpreted in the light of the principles of public interest underlying each of them. Article 3(1)(c), therefore, when used to assess the merits of a shape mark registration, must be interpreted in line with the underlying principle that all three-dimensional signs depicting specific goods or services that merely serve to designate the characteristics of those goods or services should be freely available to all.

The ECJ's decision certainly puts the squeeze on shape marks. Although they are considered to be the equal of figurative trademarks for the purposes of a number of provisions in Article 3 of the directive, they must meet additional requirements. The ECJ also stressed that a strict interpretation of Article 3(1)(c) is necessary and this will make it very difficult to register three-dimensional signs that simply depict the shape of a product.

Chris McLeod, Hammonds, London