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3D Trademarks under French and Community practice

February 2009

By Franck Soutoul and Jean-Philippe Bresson

The following article, by European trademark attorneys FRANCK SOUTOUL and JEAN-PHILIPPE BRESSON1, compares the interpretation of the requirements of distinctiveness and technical function when registering 3D trademarks at the national level in France with that of the European Community mark.

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 like a pencil or an organ pipe the pointed end of which joins to a square base. In addition, a long rectangular panel is fixed to one side of that cone and heightens the impression that the weight of the whole rests only on the point which barely touches the square base. In that way, the whole creates a striking design which is remembered easily.”

OHIM’s strict approach concerning naked 3D signs can be eased by adding graphic or word elements to the 3D shape or package. However, some countries have even more stringent rules than OHIM. Japan allowed the protection of 3D marks in 1997, but the Coca-Cola Company only recently obtained 3D registration of the Coca-Cola bottle after a long, drawn-out legal battle with the Japan Patent Office.

The technical function test

Nestle has registered the 3D Contrex bottle as a Community mark No. 000922179. (Photo: OHIM)

French law and Community Regulations both preclude from registration 3D signs whose essential characteristics perform a technical function. The reason is simple: trademark monopoly on such signs would illegitimately restrict competitors trading in identical or similar goods that incorporate such functions. Both French and Community case law consider that technical function must be determined by focusing solely on the mark concerned without analyzing whether the same result could be achieved through one or several different shapes, yet their decisions on the matter widely differ. The treatment applied to shapes of pills is particularly illustrative.

In 2004, the French High Court ruled against registration of the LEXOMIL pill shape because the tablet-breaking feature could be obtained with other shapes. However, the Versailles Court of Appeal reversed the decision in 2005, ruling that the breakable function and the overall shape of the LEXOMIL pill did not fulfill a technical function, thus opening the way for other pill shapes to be registered as French trademarks. OHIM, on the other hand, has repeatedly ruled2 that grooves on a pill simply fulfill a useful role in ingestion and do not grant the pill a specific commercial identity, thus barring them from registration.

The French Trademarks Office and courts, as well as OHIM, use a wide-lens approach in performing the technical function test. This led the European Court of Justice in case No. T-270/06, for example, to confirm an earlier OHIM decision concerning the partial cancellation of the 3D Lego brick trademark: the addition of non-essential characteristics with no technical function was pointless as long as the overall shape still served a technical purpose , i.e. the overall shape of a 3D Lego brick serves the technical purpose of building no matter how much you vary the height or diameter of the studs or increase the projections on the bricks. Nevertheless, even though it could be argued that the parameters in question are not the only ones to achieve the desired result, it is clear that the design of the brick has been developed to ease interlocking.

The trademark monopoly

Right holders who have successfully registered 3D trademarks often benefit from “special” treatment when it comes to the enforcement of their rights against third parties. A look at case law could lead one to assume that such marks have a narrow scope of protection serving only to prevent identical or almost identical reproduction of the sign. However, the scope actually depends on the balance among several factors: the Office from which the registration originates; the Office or court before which the proceeding is brought; and the level of variation, elaboration and/or aesthetic result achieved compared to that of other similar products.

A French 3D trademark that is significantly different from the natural shape of the product concerned has a greater chance of success against opposition or a cancellation action in a French court than would a similar case before OHIM against a Community Trademark. The strict approach applied by OHIM in the examination stage explains subsequent rulings at the Community level when assessing the likelihood of confusion between 3D trademarks. In one case, the Board of Appeal denied there being a likelihood of confusion between two trademarks for bottle shapes, considering that there were sufficient differences between the two shapes to place the applicant’s mark outside the scope of protection of the opponent’s earlier right3.

In a similar case, where the Board held that two competing bottle shapes were not confusingly similar, it visually studied the two bottles looking at the average distinctiveness of each bottle shape and whether there were significant differences between the marks4. The earlier mark had a longish, light filigree look, while the challenger with its thick, corpulent silhouette gave a more bulky impression. The lower part of the earlier mark had a regular form, while the lower part of challenger’s mark was irregular and had a specific curvy form with a thinner middle part. The challenged mark contained the word “snipp” whereas there were no word elements in the earlier mark.

On the other hand, some French courts refuse to grant a trademark in order to avoid the protection of a genre. While regarding as distinctive the 3D trademark for the shape of a cylindrical foie gras lollipop, the Paris Court of Appeal on June 25, 2008 denied claims of trademark counterfeiting by a product consisting of foie gras half scoops on a stick. For the Court, applying the trademark right would have involved protecting a genre, whereas the specific shapes and look of the products involved had sufficient overall differences to prevent any possible confusion.

A strategic choice

The Community and French approaches to 3D trademarks dictate the trademark strategy of right holders. Depending on the elements and features of a particular sign, the choice between a national or Community trademark, designated directly or through the Madrid system, impacts on both the possibility of obtaining registration and on the scope of protection that can be granted when bringing a proceeding. In that context, unfair competition constitutes a useful, complementary basis of action.

Protection of shapes in India

This article is an abridged version of the article “Protection of Shapes Under Indian Law” by Mr. Abhishek Malhotra, DSK Legal, India, first published in the INTA Bulletin Vol. 63 No. 13, July 15, 2008.

The Indian Trade Marks Act includes the shape of goods in the definition of trademarks, but the scope of protection is unclear, as statutory protection for the shapes of goods was only introduced in 2003. A more interesting question is whether the shape of goods may be protected under the principles of design law or trademark law, especially in India where the definition of “design” under the Designs Act, 2000, excludes trademarks.

A decision by the Delhi High Court – though pronounced before the Act came into force – provides some assistance on the seemingly overlapping protection. In Corning Inc. & Ors. v. Raj Kumar Garg & Ors., 2004 (28) PTC 257, the judge of the Delhi High Court clarified the fundamental distinction between a trademark and a design:

[A] “trademark” signals to the mind, the source or identity of the producer/manufacturer of the article, whereas a “design” appeals to the eye and attracts the consumer/purchaser. A “trademark” may also be attractive and appealing to the eye but it should be directly relatable to the producer/manufacturer of the goods whereas the “design” may be merely appealing or attractive to the eye and need not give any indication to the consumer/purchaser about the identity of the manufacturer or producer of the article.”

The court also held that a design protects only the features of shape and configuration. This distinction is significant in view of the inclusion of shapes in the definition of trademarks under the Act, because it may be concluded that whereas trademark law protects the shape of goods, design law merely protects the features of such shapes.

With regard to the issue of distinctiveness, there is no case law in India relating specifically to shape marks. However, pronouncements on product packaging or trade dress may provide guidance on the path that the courts are likely to take when faced with such an issue. It has been consistently held that trade dress cannot be inherently distinctive, and while a claim of passing off is available, even in respect of an unregistered design, the plaintiff claiming passing off has to prove that the trade dress has acquired secondary meaning or reputation in the market in relation to the trade dress. Such reputation need not be based on use in India alone but may also be in the form of trans-border reputation of a trademark that has traveled into India. Such cases have also indicated that the amount of evidence required to establish reputation in relation to a shape mark is likely to be more than that required for a word mark.


1. Both authors with INLEX IP EXPERTISE, supervisors of the LEXVALUE and PHARMINLEX Departments, and reporters for IP TALK, France
2. OHIM, Fourth Board of Appeal, November 19, 2008, Case No. R 804/2008-4.
3. OHIM, Second Board of Appeal, May 14, 2007, R 1145/2006-2
4. OHIM, Fourth Board of Appeal, November 15, 2007, R 1096/2006-4


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