In practice, it can also be more difficult to prove the distinctiveness of a trade mark consisting of the shape of a product than that of a word or figurative mark. This is because the consumer does not usually infer the origin of the goods from the shape of the goods or their packaging if graphic or word elements are missing.[1] There is also a risk of monopolisation of product designs, particularly in the case of shape marks. The examination of distinctiveness must therefore take into account the risk that trade mark law would grant exclusive rights to an economic operator which could affect competition on the product market in question.[2] The closer the shape applied for is to the shape in which the goods in question are most likely to appear, the more likely it is that this shape will lack concrete distinctiveness. Only a trade mark that deviates significantly - but not necessarily substantially[3] - from the norm or the customary practice in the industry and therefore fulfils its essential function of indicating origin also possesses distinctiveness.[4] As always, the overall impression must be taken into account.[5] It is also not necessary to specify in detail which characteristics correspond to the industry.[6] In this context, the assessment of the customary practice in the industry does not necessarily have to be based on a narrow industry concept, as the consumer's perception may also be influenced by the practice of related industries.
For example, the examination of juice packaging does not have to be limited to other juice packaging, but can include the entire beverage industry.[7]
The fact that the shape is a variant of the usual shapes of the product category or has a quality design is not sufficient either.[8] The fact that imitation products have appeared on the market does not prove distinctiveness either.[9] Following this strict standard, the GC and CJEU have almost always[10] denied distinctiveness.
Consequently, for example, those for torches,[11] soap,[12] musical instruments,[13] sugar confectionery,[14] casings for sausage making,[15] sausages,[16] paper rolls and wiping cloths for household purposes,[17] microphones,[18] wind energy generators,[19] hand-operated devices,[20] transport pallets,[21] handbags,[22] yeast breads,[23] sunshades,[24] watches,[25] transport containers,[26] toothbrushes,[27] glasses[28] or massage balls[29] registered trade marks
without any distinctive character. The trade mark
filed for colour filters and sieves, was also devoid of any distinctive character due to the yellow tip of the filter, which would be perceived as a decorative element.[30] The trade mark
filed for confectionery and crisps, was also devoid of any distinctive character as the irregular elements were merely decorative,[31] the shape of tweezers,
with exclusively decorative elements[32], the trade mark
for watch dials[33] and the trade mark
for shoes, although the Adidas three-stripes trade mark is a well-known trade mark.[34] Similarly, braiding a bottle
does not give rise to distinctiveness.[35] In contrast, the trade mark
applied for for vehicles was found to have distinctive character, taking into account in particular that such radiator grilles have long ceased to have a purely technical function.[36] The sign
has sufficient distinctive character for vehicles for transport by air or water, but not for land vehicles.[37] Simultaneous protection as a design is also ultimately irrelevant, so that the shoe laces
for example, do not have sufficient distinctive character.[38] In contrast, the trade mark
applied for loudspeakers - allegedly - had sufficient distinctive character because the shape, which was reminiscent of an organ pipe, differed sufficiently from what was customary in the industry and the high-quality products were aimed at particularly attentive consumers.[39] The GC also considered the shape of the Rubik's Cube
for the product puzzles to be protectable, although a puzzle shape exists that corresponds to the trade mark.[40]
The presence of a figurative element alone is not sufficient to prove distinctiveness. Rather, it must always be examined whether such a trade mark is capable of being used as a distinctive sign.[41]
The chocolate mouse
was therefore not protectable despite its decorative design in view of the fact that animal shapes are common in the industry.[42]
The criteria applicable to shape marks must also be applied to figurative marks that depict the product itself. Here, too, the faithful figurative representation of the goods mentioned in the list of goods is generally not capable of individualising the goods according to their origin.[43] Furthermore, the criteria also apply to trade marks where the shape is essentially determined by its surface structure.[44] Finally, the case law also applies if the trade mark merely represents a part of the goods.[45]
Footnotes
CJEU C-53/01 to C-55/01 of 8 April 2003 Linde, ref. 48; CJEU C-456/01 P and C-457/01 P of 29 April 2004 Three-dimensional tablet shape I, ref. 38; CJEU C-468/01 P to C-472/01 P of 29 April 2004 Three-dimensional tablet shape II, ref. 36; CJEU C-473/01 P and C-474/01 P of 29 April 2004 Three-dimensional tablet shape II, ref. 29.4.2004 Three-dimensional tablet shape III, ref. 36; CJEU C-136/02 P of 7.10.2004 Mag Instrument, ref. 30 and 83; CJEU C-173/04 P of 12.1.2006 Deutsche SiSi-Werke, ref. 28; CJEU C-24/05 P of 22.6.2006 Storck I, ref. 25; CJEU C-25/05 P of 22.6.2006 Storck II, ref. 27; CJEU C-144/06 P of 4 October 2007 Red and white rectangular tablet with a blue oval core, ref. 36; CJEU C-238/06 P of 25 October 2007 Develey, ref. 80; CJEU C-497/07 P of 27 June 2008 Philip Morris Products, ref. 25; CJEU C-20/08 P of 9 December 2008 Enercon, ref. 49; CJEU C-546/10 P of 13 September 2011 Wilfer, para. 53; CJEU C-345/10 P of 20 October 2011 Freixenet, para. 46; CJEU C-96/11 P of 6 September 2012 August Storck, para. 35; CJEU C-97/12 P of 15 May 2014 Louis Vuitton Malletier, para. 51; CJEU C-521/13 P of 11 September 2014 Think Schuhwerk. Ref. 48; CJEU C-417/16 P of 4 May 2017 August Storck, ref. 34; CJEU C-26/17 P of 13 September 2018 Birkenstock Sales, ref. 32; CJEU C-783/18 P of 12 December 2019 EUIPO/Wajos, ref. 24; for works of art BGHZ 5, 1, 5 ff. Hummelfiguren.
↩CJEU T-194/01 of 5 March 2003 Tablet for washing machines or dishwashers XII, ref. 66; cautious CJEU C-25/05 P of 22 June 2006 Storck II, ref. 36.
↩CJEU C-24/05 P of 22 June 2006 Storck I, ref. 28; CJEU C-25/05 P of 22 June 2006 Storck II, ref. 31.
↩CJEU C-456/01 P and C-457/01 P of 29 April 2004 Three-dimensional tablet shape I, ref. 39; CJEU C-468/01 P to C-472/01 P of 29 April 2004 Three-dimensional tablet shape II, ref. 37; CJEU C-473/01 P and C-474/01 P of 29 April 2004 Three-dimensional tablet shape III, ref. 37; CJEU C-136/02 P of 7.10.2004 Mag Instrument, ref. 31; CJEU C-173/04 P of 12.1.2006 Deutsche SiSi-Werke, ref. 31; CJEU C-24/05 P of 22.6.2006 Storck I, ref. 26; CJEU C-25/05 P of 22.6.2006 Storck II, ref. 28; CJEU C-144/06 P of 4.10. 2007 Red and white rectangular tablet with a blue oval centre, para. 37; CJEU C-238/06 P of 25 October 2007 Develey, para. 81; CJEU C-345/10 P of 20 October 2011 Freixenet, para. 47; CJEU C-97/12 P of 15 May 2014 Louis Vuitton Malletier, para. 52; CJEU C-521/13 P of 11 September 2014 Think Schuhwerk, para. 52; CJEU C-521/13 P of 11 September 2014 Think Schuhwerk, para. 52. 2014 Think Schuhwerk, ref. 49; CJEU C-445/13 P of 7 May 2015 Voss of Norway, ref. 91; CJEU C-417/16 P of 4 May 2017 August Storck, ref. 35; CJEU C-26/17 P of 13 September 2018 Birkenstock Sales, ref. 33; CJEU C-783/18 P of 12 December 2019 EUIPO/Wajos, ref. 24; see also above Section 4.4.3.6.
↩BGH I ZB 39/16 of 6 April 2017 Schokoladenstäbchen III.
↩CJEU C-783/18 P of 12 December 2019 EUIPO/Wajos, ref. 31.
↩CJEU C-173/04 P of 12 January 2006 Deutsche SiSi-Werke, ref. 32 ff.
↩CJEU C-136/02 P of 7 October 2004 Mag Instrument, paras. 32 and 68; CJEU C-445/13 P of 7 May 2015 Voss of Norway, para. 92; CJEU C-783/18 P of 12 December 2019 EUIPO/Wajos, para. 25; GC T-71/06 of 15 Nov. 2007 Form of the nacelle cladding of a wind energy converter, ref. 29, confirmed in conclusion by CJEU C-20/08 P of 9 December 2008 Enercon; see also GC T-148/08 of 12 May 2010 Schreibinstrument-Design, ref. 121.
↩GC T-351/07 of 17 December 2008 Sunshield, ref. 35.
↩See also GC T-36/01 of 9 October 2002 Glass Pattern I, ref. 26 ff, confirmed by GC C-445/02 P of 28 June 2004 Glaverbel; GC T-324/01 and T-110/02 of 30 April 2003 Shape of a cigar and a gold ingot; GC T-146/02 to T-153/02 of 28 January 2004 Standbeutel [on this also BGH I ZB 68/17 of 9 May 2018 Standbeutel; BGH I ZR 156/16 of 1 October 2018 Sun Blast Organic], confirmed by CJEU C-173/04 P of 12 January 2006 Deutsche SiSiSU. 12.1.2006 Deutsche SiSi-Werke; GC T-360/03 v. 23.11.2004 Shape of a cheese box; GC T-262/04 v. 15.12.2005 BIC lighter I; GC T-263/04 v. 15.12.2005 BIC lighter II; GC T-127/06 v. 5.12.2007 Saw blade in blue colour, ref. 24 ff.; critical on the latter Bender, MarkenR 2008, 41, 46.
↩GC T-88/00 of 7 February 2002 Shape of torches, ref. 37 ff., at the same time on three other similar torch shapes; confirmed by CJEU C-136/02 P of 7 October 2004 Mag Instrument.
↩GC T-63/01 of 12 December 2002 Shape of a soap II, ref. 43 ff.; confirmed by CJEU C-107/03 P of 23 September 2004 Shape of a soap.
↩GC T-458/08 of 8 September 2010 Guitar head, ref. 53 ff., confirmed by CJEU C-546/10 P of 13 September 2011 Wilfer.
↩GC T-396/02 of 10 November 2004 Shape of a sweet, confirmed by CJEU C-24/05 P of 22 June 2006 Storck I; GC T-402/02 of 10 November 2004 Sweet wrapper (wrapper shape), confirmed by CJEU C-25/05 P of 22 June 2006 Storck II.
↩GC T-15/05 of 31 May 2006 Shape of a sausage, ref. 39 ff.
↩GC T-449/07 of 5 May 2009 Sausage shape, ref. 26 ff.
↩GC T-283/04 of 17 January 2007 Relief motif, ref. 45 ff.
↩GC T-358/04 of 12 September 2007 Shape of a microphone basket, ref. 46 and 56 ff.
↩GC T-71/06 of 15 November 2007 Shape of the nacelle cladding of a wind energy converter, ref. 26 ff., confirmed in conclusion by CJEU C-20/08 P of 9 December 2008 Enercon.
↩GC T-391/07 of 16 September 2009 Griff, ref. 54 f.
↩GC T-387/06 to T-390/06 of 10 October 2008 Palette, ref. 31 ff.
↩GC T-73/06 of 21 October 2008 Shape of a handbag, ref. 27 ff.
↩GC T-8/08 of 10 March 2008 Shape of a shell, ref. 23 ff.
↩GC T-351/07 of 17 December 2008 Sunshade, ref. 27 ff.
↩GC T-235/10 of 6 July 2011 Clock with serrated edge, ref. 27 ff., confirmed by CJEU C-453/11 P of 14 May 2012 Timehouse.
↩GC T-383/15 of 20 April 2016 Dima.
↩GC T-385/15 of 14 June 2016 Toothbrush.
↩GC T-857/16 of 26 October 2017 Weißbierglas, ref. 30 ff.
↩GC T-387/17 of 16 May 2018 Triggerball, ref. 29 ff.
↩GC T-201/06 of 10.9.2008 Colour filter, ref. 23 ff.
↩GC T-28/08 of 8 July 2009 Chocolate bar, ref. 32 ff.; GC T-618/14 of 29 June 2015 Grupo Bimbo, ref. 36 ff., confirmed by CJEU C-476/15 P of 15 March 2016 Grupo Bimbo; also GC T-240/15 of 1 June 2016 Grupo Bimbo, ref. 34 ff.; GC T-570/19 of 26 March 2020 Braided cheese.
↩GC T-78/08 of 11 June 2009 Tweezers, ref. 26 ff.
↩GC T-152/07 of 14 September 2009 Geometric fields on the dial of a watch, ref. 76 f. and 88 ff.
↩GC T-3/15 of 4 December 2015 K-Swiss, ref. 18 ff.
↩GC T-172/19 of 13 May 2020 Braid on a bottle.
↩GC T-128/01 of 6 March 2003 Radiator grille, ref. 40 ff.; on this decision also GC T-127/06 of 5 December 2007 Saw blade in blue colour, ref. 42 ff.; see also BGH I ZB 33/04 of 15 December 2005 Porsche Boxter, ref. 15 ff.
↩GC T-629/14 of 25 November 2015 Jaguar Land Rover, ref. 23 ff.
↩GC T-573/18 of 5 February 2020 Shoelaces, ref. 45 ff.
↩GC T-460/05 of 10 October 2007 Form eines Lautsprechers, ref. 40 ff.; critical on this Bender, MarkenR 2008, 41, 50; also the renewed rejection as a shape of goods by GC T-508/08 of 6 October 2011 Form eines Lautsprechers II, ref. 40.
↩GC T-450/09 of 25 November 2014 Simba Toys, ref. 106 ff.; also sceptical on protectability (ground for refusal of registration of technical conditionality) CJEU C-30/15 P of 10 November 2016 Simba Toys.
↩CJEU C-96/11 P of 6 September 2012 August Storck, ref. 39; CJEU C-417/16 P of 4 May 2017 August Storck, ref. 40.
↩GC T-13/09 of 17 December 2010 Chocolate Mouse Mould, ref. 29 ff., confirmed by CJEU C-96/11 P of 6 September 2012 August Storck.
↩CJEU C-144/06 P of 4 October 2007 Red and white rectangular tablet with a blue oval core, ref. 38; CJEU C-546/10 P of 13 September 2011 Wilfer, ref. 58; CJEU C-97/12 P of 15 May 2014 Louis Vuitton Malletier, ref. 53; CJEU C-521/13 P of 11 September 2014 Think Schuhwerk. Ref. 49; GC C-417/16 P of 4 May 2017 August Storck, ref. 36 and 40; GC C-26/17 P of 13 September 2018 Birkenstock Sales, ref. 34; also GC C-299/99 of 18 June 2002 Philips/Remington, which was based on a figurative mark; GC T-30/00 of 19 Sept. 2001 Tablet for washing machines or dishwashers IV, ref. 49; GC T-128/01 of 6 March 2003 Radiator grille, ref. 38 f.; BGH GRUR 1997, 527, 528 Car rim; BGH GRUR 1999, 495, 496 Labels; BGH GRUR 2000, 502, 503 St. Pauli Girl; BGH GRUR 2001, 239 f. Zahnpastastastrang; BGH GRUR 2004, 502, 504 Gabelstapler II; BGH I ZB 68/09 of 1 July 2010 Hefteinband, ref. 8; on a design applied to the surface of the goods GC T-36/01 of 9 October 2002 Glass Pattern I, ref. 24.
↩CJEU C-345/10 P of 20 October 2011 Freixenet, ref. 48, with further references. N.; CJEU C-26/17 P of 13 September 2018 Birkenstock Sales, ref. 34.
↩CJEU C-546/10 P of 13 September 2011 Wilfer, ref. 59; CJEU C-97/12 P of 15 May 2014 Louis Vuitton Malletier, ref. 54; CJEU C-26/17 P of 13 September 2018 Birkenstock Sales, ref. 35.
↩