3D Trademarks Under French And Community Practice Non-Traditional Marks

Compared to more traditional trademarks, three- dimensional (3D) trademarks are under-used by business, and very few applications for such trademarks are made. With the rapid increase in the number of Madrid system member states in recent years - the system now has 84 members - it is an opportune moment to look at differences in requirements for the registration of 3D trademarks.

Both product shape and packaging are eligible for trademark registration. French and European Community trademark provisions number them among the figurative signs that may constitute trademarks; however, such 3D trademarks must not only fulfill the same conditions as traditional trademarks but must also meet additional legal requirements. Distinctiveness and technical function requirements remain the most frequent grounds of refusal of 3D trademarks. This article outlines how these two aspects are handled in practice and assesses the strength of monopoly of registered 3D trademarks.

The distinctiveness test

Lack of distinctiveness is the first ground for refusal of 3D trademarks, especially when it comes to "naked" - containing no words or graphics - shapes or packaging. Community examiners at the Office for Harmonization in the Internal Market (OHIM) are much stricter about this requirement than in French practice.

As far as OHIM is concerned, the average consumer does not identify products or manufacturers simply by shape or packaging. The more closely the shape for which registration is sought resembles the typical or natural shape used for such products, the more devoid of any distinctive character OHIM will consider it to be. This makes it much more difficult to establish distinctiveness in relation to 3D trademarks.

Only a very limited number of 3D applications have become Community marks; most being barred for lack of distinctiveness, a hurdle few applicants have overcome. Those who have succeeded registered marks with a particularly high degree of distinctiveness and/or clearly demonstrated long-term extensive use, thereby acquiring enhanced distinctiveness in the market. For example, the European Court of First Instance in case No. T-305/ 02 considered the transparent bottle used by Contrex® for its mineral water distinctive due to a combination of factors. Its overall aesthetic look was deemed appealing and consumers easily distinguished its shape from other similar goods - thus making it truly specific.

A Bang & Olufsen loudspeaker BEOLAB 8000 also won the battle in case No. T-460/05, because of its unusual shape, its striking design quality and the ease with which consumers could recognize its shape which is significantly different from the norm. The Court ruled that "the shape of the mark is truly specific and cannot be considered to be altogether common. Thus, the body of the loudspeaker is formed of a cone which looks...