Dutch Supreme Court Refers Questions To CJEU On "Substantial Value" And "Nature Of The Goods" In Relation To 3D Marks
A discussion on the unresolved questions of trade mark law, and under what circumstances a shape mark is ineligible for protection.
Netherlands
Intellectual Property
One of the still unresolved questions of trade mark law is under
what circumstances a shape mark is ineligible for protection
because it consists of a shape that gives substantial value to the
products for which protection is sought. In 2012, we reported on a
case referred to the CJEU by the Dutch Supreme Court in a conflict
regarding a 3D mark registered by Revillon for chocolate products
in the shape of a vine branch, but that case (C-2/12) has since
been removed from the register. In its decision of 12 April 2013,
the Dutch Supreme Court however again referred questions to the
CJEU, this time regarding the shape of a chair. The questions
address the issues of when a shape gives substantial value to the
products in question and when a shape results from their
nature.
The Dutch Supreme Court formulated the questions as follows:
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1.
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- Does the ground for refusal or invalidity set out in Article 3
(1) (e) (i) of Directive 89/104/EEC, as codified in Directive
2008/95, i.e. that the sign consists exclusively of a shape which
results from the nature of the goods themselves, apply only where
the shape of a product is essential to its function or does that
ground also apply where the product has one or more essential,
use-related features which the consumer possibly looks for in the
products of competitors?
- If none of the above alternatives is correct, how should the
rule be interpreted?
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2.
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- Does the ground for refusal or invalidity set out in Article 3
(1) (e) (iii) of Directive 89/104/EEC, as codified in Directive
2008/95, i.e. that the sign consists exclusively of a shape which
gives substantial value to the goods, involve consideration of the
motive(s) of the relevant public for the purchase decision?
- In order for a shape to give "substantial value to the
goods" within the meaning of the abovementioned rule is it
necessary that the shape be regarded as the main or predominant
value, in comparison to other kinds of value (such as safety,
comfort and durability in the case of baby chairs)? Or can a shape
also give "substantial value to the goods" if, besides
that main or predominant value, the goods also have other kinds of
value that can also be regarded as substantial?
- Is the perception of the majority of the relevant public
decisive for the answer to questions 2.a and 2.b, or can the court
hold that the perception of a part of the public is sufficient to
justify viewing the value in question as "substantial"
within the meaning of the abovementioned provision?
- If the answer to question 2.c is that the perception of a part
of the public is sufficient, how large a part of the public is
required?
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3.
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Should Article 3 (1) of Directive 89/104/EEC, as codified in
Directive 2008/95, be interpreted to mean that the ground for
refusal or invalidity set out in (e) of that article also exists if
the shape mark consists of a sign to which Article 3(1)(e)(i)
applies and which otherwise meets the requirement set out in
Article 3(1)(e) (iii)?
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It will take at least a year before we know the CJEU's
answers to these questions.
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