The issue as to the distinctiveness and registrability of three-dimensional trade marks has occupied the European courts for some time now, with significant decisions concerning registrability of the shape of a forklift truck, a torch, a wristwatch, cigar and gold ingot shapes for chocolate, the shape of soap tablets for washing machines and the registrability of a three dimensional mark consisting of the packaging of a product. The latest opinion of Advocate General (AG) Ruiz-Jarabo Colomer on 16 March 2004 in Mag Instruments Inc v OHIM confirms the line of reasoning adopted by the European Court of Justice (ECJ) and the Court of First Instance (CFI) in its earlier case law. In a nutshell, the AG opined that three-dimensional marks relating to the cylindrical shapes of torches should be rejected on the ground that they lacked distinctiveness.
In the decision appealed from, the CFI had stated that the shapes (entirely cylindrical or widening out at the end) were used by other manufacturers of torches and that the aesthetic qualities and unusually original design were mere "variants" of common torch shapes so that the marks claimed gave the consumer an indication as to the nature of the product, rather than enabling the product to be differentiated and linked to a specific commercial source.
The AG also confirmed that the distinctive character of a sign consisting of the shape of a product must be assessed in the light of the presumed expectation of an average consumer who is reasonably well-informed, observant and circumspect. This type of test does not entail an actual comparison of the signs sought to be registered with those in current use but with an ideal model composed of elements which naturally convey to the mind an image of the shape of the product. Only in the event of doubt or in specialized areas are the registration authorities or, where appropriate, the Court under an obligation to obtain outside evidence such as studies or opinions.
The latest case law of the European courts significantly raises the bar for registerability of three-dimensional marks. On the one hand, it is settled law that signs consisting exclusively of the shape that results from the nature of the goods themselves are not to be registered. On the other hand, the fancifulness or complexity of a design, which serves no specific function nor purpose, does not necessarily seem to be sufficient to establish the distinctiveness of a three-dimensional mark.
It would seem that, with the introduction of the EU-wide design right, many novel product and packaging shapes will more appropriately and easily obtain registered design protection, at least initially.
The AG’s opinion is advisory only, but is likely to be followed by the ECJ.
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