As with any other type of trade mark, a three-dimensional trade mark consisting of the shape of the goods must also be examined to determine whether it fulfils the criteria of a ground for refusal.[1] The same applies to figurative marks, respectively.[2]
For example, the trade mark
applied for for soap describes the scent of the soap and is therefore not protectable.[3]
Particularly in the case of three-dimensional trade marks consisting of the packaging of goods, the packaging of the goods can serve to designate the characteristics of the packaged goods.[4]
For example, the Bocksbeutel bottle indicates - with restrictions[5] - the geographical origin of wines from Franconia. This form of packaging would be descriptive of the characteristics of the product ‘wine’. The reproduction of typical motifs of playing cards is descriptive as a trade mark for the product ‘playing cards’.[[6]
Furthermore, the BGH - unconvincingly - wants to attribute a much wider scope of application to the ground for refusal also for product shape and packaging marks. The court still assumes the outdated concept of the requirement of availability and that the shape mark is capable of describing the shape of the goods themselves.
For example, the design
of a cheese in the shape of a flower is said to be descriptive because the specific shape of the cheese is described.[7]
This interpretation is not only unconvincing in view of the wording of the relevant provisions: a representation does not describe the product, but depicts it. What is worse, however, is that according to the BGH's reasoning, any shape of goods trade mark is a descriptive trade mark from the outset. This is because the shape of the goods is always ‘described’. However, the fact that the ground for refusal of registration of the descriptive indication mutates into a general prohibition of registration for shape marks is clearly not the intention of the legislator and the CJEU, which does not want to apply different standards to shape marks than to other trade marks.[8] It remains to be hoped that the BGH will abandon its case law and in future measure shape marks more strictly against the ground for refusal of lack of distinctive character.
Footnotes
CJEU C-53/01 to C-55/01 of 8 April 2003 Linde, ref. 75 f.; CJEU C-218/01 of 12 February 2004 Henkel, ref. 43; to a large extent still BGH GRUR 2004, 329, 331Käsein Blütenform I; BGH GRUR 2004, 502, 504 f. Gabelstapler II; BGH GRUR 2004, 506, 507 Stabtaschenlampen II; also BGH I ZB 33/04 of 15 December 2005 Porsche Boxter, ref. 20 f.
↩See CJEU C-629/17 of 6 December 2018 J. Portugal Ramos Vinhos, ref. 16.
↩GC T-747/18 of 12 December 2019 Soap in flower form, ref. 66 ff., appeal not allowed by CJEU C-72/20 P of 4 June 2020 Refan Bulgaria.
↩CJEU C-218/01 of 12 February 2004 Henkel, ref. 42-44.
↩See CJEU 16/83 of 13 March 1984 Bocksbeutel.
↩GC T-160/02 to T-162/02 of 11 May 2005 Naipes Heraclio Fournier, ref. 46 ff., confirmed in conclusion by CJEU C-311/05 P of 4 October 2007 Naipes Heraclio Fournier v OHIM.
↩BGH I ZB 46/05 of 3 April 2008 Käse in Blütenform II, ref. 16; also BGH I ZB 2/06 of 3 April 2008; I ZB 3/06 of 3 April 2008; I ZB 4/06 of 3 April 2008; respectively already BGH I ZB 66/06 of 24 May 2007 Rado-U. Fournier/HABM. 24 May 2007 Rado-Uhr III; see also BGH I ZR 18/05 of 25 October 2007 TUC-Salzcracker, ref. 25; BGH I ZB 88/07 of 9 July 2009 ROCHER-Kugel, ref. 29 f.
↩See on the lack of distinctive character CJEU C-299/99 of 18 June 2002 Philips/Remington, ref. 48; CJEU C-53/01 to C-55/01 of 8 April 2003 Linde, ref. 42 and 49; CJEU C-456/01 P and C-457/01 P of 29.4.2004 Three-dimensional tablet shape I, ref. 38; CJEU C-468/01 P to C-472/01 P of 29.4.2004 Three-dimensional tablet shape II, ref. 36; CJEU C-473/01 P and C-474/01 P of 29.4. 2004 Three-dimensional tablet shape III, ref. 36; CJEU C-136/02 P of 7 October 2004 Mag Instrument, ref. 30; CJEU C-173/04 P of 12 January 2006 Deutsche SiSi-Werke, ref. 27; CJEU C-24/05 P of 22 June 2006 Storck I, ref. 24; CJEU C-25/05 P of 22 June 2006 Storck II, ref. 26; CJEU C-144/06 P of 4 October 2007 Red and white rectangular tablet with a blue oval centre, ref. 36; CJEU C-238/06 P of 25 October 2007 Develey, ref. 80.
↩