3-D trademarks:
comparison of national practices
in the light of the EU case law
French practice of 3-D trademarks
Laurence Julien-Raes, Avocat à la Cour, Partner, DLA PIPER UK LLP
AIPPI 1st joint seminar of French & German Groups
November 7th 2013
CFI, 28 May 2013, OHIM v Nordic Spirit AB
"Voss of Norway"
1. Established EU case law principles:
a) The distinctive character must be assessed:
i.
in relation to the goods or services for which registration
of the sign has been applied for
ii. in relation to the perception of the relevant public, which
consists of the consumers of those goods or services
b) the criteria for assessing the distinctive character of
three-dimensional marks consisting of the appearance of
the product itself are no different from those applicable to
other categories of trade mark
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11/07/2013
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CFI, 28 May 2013, OHIM v Nordic Spirit AB
"Voss of Norway"
c) the product shape is not as easily as a verbal or
figurative mark recognized by the public as an
indication of origin
d) it could therefore prove more difficult to establish
distinctive character in relation to such a 3-D mark
than with respect to a verbal or figurative mark
e) only a mark which departs significantly from the
norms and customs of the relevant sector is not
devoid of any distinctive character
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CFI, 28 May 2013, OHIM v Nordic Spirit AB
"Voss of Norway"
2. Assessment of the distinctive character of 3-D
application for a bottle:
a) it is well known that the vast majority of bottles
available on the market have a cylindrical section.
b) the average consumer will naturally expect beverage
bottles mostly having that shape.
c) The cylindrical bottle, somewhat original, cannot be
regarded as departing significantly from the norms
and customs of the sector and is therefore devoid of
any distinctive character.
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CFI, 28 May 2013, OHIM v Nordic Spirit AB
"Voss of Norway"
The severity of the CFI's assessment of the distinctive
character appears when it states that:
1) The fact that the Board of Appeal did not establish that there
were other similar bottles on the market does not affect the
3-D shape being devoid of any distinctive character.
2) Even if the applicant's bottle is one of a kind, that does not by
itself mean that it departs significantly from the norms of
the sector and that it therefore has distinctive character.
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11/07/2013
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CFI, 28 May 2013, OHIM v Nordic Spirit AB
"Voss of Norway"
Voss of Norway confirms the more and more severe
position of EU case law regarding the assessment of the
distinctive character of 3-D trademarks
The CFI appears to be especially demanding when it
decides whether a mark departs significantly from the
norms and customs of the relevant sector
The CFI is suggesting that to become a registered
trademark a 3-D shape should have acquired a distinctive
character through intensive use first
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Voss of Norway case: a possible impact on 3-D
trademarks French practice?
 Consequences:
Same high standards should be applied by the French
judges
Possible limitation of national protection of 3-D marks
to 3-D shape with a distinctive character acquired
through intensive use
Does the French practice already meet the
requirements of the CFI in Voss of Norway with respect
to distinctive character?
Other points : - substantial value?
- infringement proceedings?
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11/07/2013
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Distinctive character:
differences between EU and French case law?
Distinctive character : a strict assessment by EU Courts
CFI, 14 December 2011, Louis Vuittton Malletier v OHIM
 the locking devices used on goods such as trunks, travelling bags, garment
bags for travel, handbags etc., may take different forms but very frequently
consist of two parts which lock into each other in various ways and of a
device, such as a button or lever, to activate the unlocking mechanism.
So far as the mark applied for has those
characteristics.
Therefore this mark consists of the typical
image of a locking device for the abovementioned goods and is, therefore, devoid of
any distinctive character as regards those
goods.
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Distinctive character:
differences between EU and French case law?
Distinctive character: a more liberal approach in French
case law
CA Paris, 20 May 2011, H & M v Louis Vuitton Malletier
 None of the locking devices submitted by the defendant reproduce or come
close to the combined lines of the plaintiff's 3-D mark.
 Thus, it is likely that consumers will recognize a distinctive character to this
shape
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11/07/2013
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Distinctive character:
differences between EU and French case law?
CFI, 22 March 2013, Bottega Venetta v OHIM
The shape of this handbag , which is rectangular and have rounded edges,
does not depart significantly from the norms and customs of the sector as they
result from the applicant's internet search.
Therefore, it is no different from the other handbags already on the market and
does not indicate an origin = devoid of any distinctive character.
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Distinctive character:
differences between EU and French case law?
TGI Paris, 18 January 2013 Bottega Veneta v Paris Heritage
 The defendant does not provide evidence that this shape results from
the nature of the covered goods
 A handbag may take various forms but the shape of the plaintiff's 3-D
mark is specific and departs from the norms and customs of the sector
and is therefore distinctive
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Distinctive character:
differences within the French practice?
Is the French approach even consistent ?
Differences can be identified also within the French case law:
CA Paris, 10 April 2013 Gucci v Eram (overruled TGI Paris 13 mars 2012):
 Defendant does not establish that Gucci horse-bit became common-place in
the established norms and customs for shoes.
 A horse-bit may take many forms without being identical to Gucci's 3-D mark.
 Therefore, this 3-D mark appears to be distinctive and will be recognized as
an indication of origin for shoes by the relevant public.
 Intensive use of the mark reinforced its distinctive character
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Distinctive character:
differences within the French practice?
 TGI Paris, 13 March 2012, Gucci v Eram (application of Gucci's 3-D
mark made in bad faith – overruled by CA Paris 10 April 2013)
+
 TGI Paris, 17 January 2013, Gucci v Vetir
 Since the 1960's, horse bits are used on shoes as decorative elements
 Gucci does not establish that the public will recognize in this shape an
indication of the product's origin
 After this 3-D mark's application, other undertakings continued to use similar horse bits
on shoes so that the average consumer of a product of that kind will only see in these
signs a decorative element
 Gucci's 3-D mark did not acquired distinctiveness through intensive use
 The mark is devoid of any distinctive character and shall be cancelled accordingly
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Substantial value: differences in France & EU?
A difference of wording can be noted between French and
EU law:
 Directive 2008/95/EC of 22 October 2008, art. 3, §1 e) iii) :
"The following shall not be registered or, if registered, shall be liable
to be declared invalid: […] Signs which consist exclusively of:
(iii) the shape which gives substantial value to the goods"
 Article L. 711-2 c) of French intellectual property code:
"The following shall not be of a distinctive nature: […] c) Signs […]
which give the product its substantial value"
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Substantial value: differences in France & EU?
 Consequences?
EU wording seems to give a wider scope to this
exclusion
According to the directive, to be excluded, the shape
should only contribute without necessarily giving its
intrinsic/inherent value to the good
A strict interpretation of French law in the light of the
directive could make the French practice as demanding
as the EU case law (e.g. CFI, 6 October 2011, Bang &
Olufsen)
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Substantial value: differences in France & EU?
 CFI, 6 October 2011, Bang & Olufsen v OHIM
 "it must be noted that, for the goods at issue, the design is an
element which will be very important in the consumer’s choice
even if the consumer also takes other characteristics of the
goods at issue into account".
 "The shape for which registration was sought reveals a very specific
design and the applicant itself admits[…], that that design is an
essential element of its branding and increases the appeal of
the product at issue, that is to say, its value".
 "It is apparent […] from extracts from distributors’ websites and online auction or second-hand websites, that the aesthetic
characteristics of that shape are emphasized first and that the
shape is perceived as a kind of pure, slender, timeless sculpture
for music reproduction, which makes it an important selling point".
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Substantial value: differences in France & EU?
= Possible rejection of 3-D trademarks judged as valid by French case
law such as:
 TGI Paris, 13 January 2011, Christian Dior Couture v Naf Naf
 This shape cannot be confused with the good itself
 It can be easily separated from the good and can also be used on various
goods of different kinds.
 Thus, the shape does not give its substantial value to the good
Dior's cane work pattern
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Substantial value: differences in France & EU?
 TGI Paris, 10 February 2012, Ponnay v Burberry
The substantial value of the mark has been acquired through
intensive use and advertisement investments
Consumers will choose to purchase the goods because of their
inherent characteristics, their quality and originality
Burberry's tartan pattern
AIPPI joint seminar of French and German Groups
11/07/2013
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Substantial value: differences in France & EU?
 TGI Paris, 6 July 2012, Seven Towns LTD + Rubik v Forimport
 The cubic shape of the marks does not give a substantial value to
these 3-D puzzles.
 This shape is one among many others in the sector of 3-D puzzles
Rubik's cube puzzles
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3-D trademarks infringement proceedings
France
Germany
Comparison of national practices
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3-D trademarks infringement proceedings
 In Germany :
 the attacked 3-D shape must be used as a trademark/recognized as
an indication of origin
 the existence of others (distinctive) elements such as words, might
hinder the public to consider the shape as an indication of origin
 assessment of the risk of confusion: only the elements with a
character indicating an origin are taken into account. The
reproduction of aesthetic features will not be sufficient to establish
such a risk
 Different word elements of the infringing shape are thus often
decisive in favour of the defendant (Ritter/Milka : similar
shape/dissimilar word elements = colour and typical milka cow ruled
out the risk of confusion).
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3-D trademarks infringement proceedings
 How the infringement of 3-D trademarks is assessed in
France?
 Infringement of 3-D trademarks is judged only focusing on the
comparison of the shapes.
 French judges do not focus their analysis on whether or not
the shape is being used as a trademark or seen as indicating
an origin.
 Risk of confusion is assessed in view of the overall impression
and the distinctive and dominant elements of the shapes.
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CA Paris, 13 September 2002, Perrier v Saint-Martial
 The word elements on the label of the presuming
infringing form don't rule out the risk of confusion as the
substantial similarity between the shapes of bottles
remains.
Perrier's
bottle
(Valvert
water)
AIPPI joint seminar of French and German Groups
SaintMartial's
bottle
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CA Paris 19 December 2012, Saray biskuvi v Ferrero
According to the defendant, there is no risk of confusion
considering that "Vagoon" and "Mc Chokels" indicate the origin
of the products and the other features are aesthetical and not
used as trademarks
Two of the
Three of
the
Plaintiff's
3-D
marks
AIPPI joint seminar of French and German Groups
presumably
infringing forms:
11/07/2013
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CA Paris 19 December 2012, Saray biskuvi v Ferrero
 Appeal Court:
 Infringement must be judged on the similarities between
the products and not the dissimilarities (established
principle in French case law)
 Defendant's products are reproducing the characteristics
of the plaintiff's 3-D marks
 The word elements (MC CHOKELS, WAGOON) are
insignificant differences and are unlikely to rule out the
overall visual impression leading to the infringement of
the plaintiff's 3-D marks
AIPPI joint seminar of French and German Groups
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TGI Paris, 6 May 2011, Ferrari v Ak Pa Handels
 The identity of the products combined with the high similarity between the
signs creates a risk of confusion for the average consumer
 The defendant's products were found infringing Ferrari's 3-D mark but only
for the red cars
 Yellow car toys are not an imitation of Ferrari's 3-D mark as the latter is not
registered in this specific colour
Ferrari's 3-D mark
Defendant's product
(no picture available)
Transparent tube with
red chocolates in it
and a red or yellow
car toy on its top
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Discussion:
 Is there a different position in France and Germany
especially on the enforcement of 3-D trademarks?
 Is this a real or a cosmetic difference?
 What will be the position of French judges on these
questions in the future?
 Could we have a more comprehensive case law between
France and Germany?
AIPPI joint seminar of French and German Groups
11/07/2013
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3-D trademarks: comparison of national practices in the light