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Three-Dimensional Marks (Shape Marks) in the European Union
(Ngày đăng: 2022-03-16)

Three-Dimensional Marks (Shape Marks) in the European Union

 

Attorney Le Quang Vinh – Bross & Partners

Email: vinh@bross.vn

 

Unlike Vietnam where protection of an applied-for trademark is afforded only when it simultaneously satisfies both protection criteria: inherent distinctiveness and no likelihood of confusion to earlier rights, the EUIPO only examines the formality, and makes ex officio examination, of an applied-for EU mark (EUTM) as to the absolute ground of refusal. The relative ground of refusal, even though found by the EUIPO, shall be merely raised through apposition/revocation proceedings by a potential opponent who holds an earlier right. Below we summarize some most important practices as to the examination of 3D marks in the EU on the ground of reference to the TM5 Guidelines for application requirements for three-dimensional marks, the EUIPN’s CP9 Common Practice and the EUIPO’s guidelines for examination of European Union trade mark.

 

1.     A three-dimensional mark, which can be widely known as different names such as 3D mark, shape mark, three-dimensional shape mark, or three-dimensional trademark, can exist in the form of design, shape of the goods, or packaging of the goods. A three-dimensional mark is registrable in the European Union (EU) because EU legislation defines that a trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of packaging of goods, or sounds, provided that such signs are capable of (a) distinguishing the goods or services of one undertaking from those of other undertakings; and (b) being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise matter of the protection afforded to its proprietor.[1]

 

  1. Applicant shall identify his/her 3D mark on the online form as one of types of marks that best describe the mark he/she wants to register. Those are word marks, figurative marks, figurative marks containing word elements, shape marks, or shape marks containing word elements. For examples:

 

Shape mark

Shape mark containing word element

 

  1. Under Article 4 EUTMR, reproduction of marks is not required to be represented graphically as long as it can enable the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor. In practice, an applicant may submit either a graphic reproduction of the shape, including computer-generated imaging, or a photographic reproduction. Unless the representation is provided electronically, an EUTM may contain up to six different views. Reproduction of 3D marks in the format of JPEG, OBJ, STL, and X3D are all acceptable. No description has been made available for shape mark.

 

4.     However, pursuant to Article 4 of Directive (EU) 2015/2436 and Article 7 EUTMR, a 3D shape mark is not registrable if it falls into one of three categories: (1) the shape, or another characteristic, which results from the nature of the goods itself; (2) the shape, or another characteristic, of the goods which is necessary to obtain a technical result; (3) a shape, or another characteristic, which gives substantial value to the goods. The shapes of a banana, a highchair “Tripp Trapp”, a building block in a construction toy “Red Logo Brick”, a knife handle, a loudspeaker shown below were concluded by the EUIPO or EU courts as the subject matters of exclusion from protection:

 

Shape resulting from the nature of the goods itself

Shape necessary to obtain a technical result

Shape giving substantial value to the goods

 

  1. A 3D mark that either features a literal element or features no literal element is generally registrable in the EUIPO because the shape marks consist of, or extend to, a three-dimensional shape, therefore they do not necessarily need to contain any other element for these to be registrable as long as they are distinctive. For examples:

 

Reg. No. 011686482

Class 12: Motorcycles

Class 28: Toys

 

Reg. No. 004957189

Class 3: laundry preparations, soaps

 

Reg. No. 011947009

Class 21: Cups, plates, glasses

Class 30: Cafe, sugar, chocolate, bread

Class 33: Coffee liqueurs

Reg. No. 003339108

Class 20: Containers

Class 30: Confectionery

 

  1. A disclaimer statement to a verbal element by the applicant is no longer possible since March 23, 2006. However, visual disclaimers have been explicitly foreseen for position marks. Similarly, for the shape mark, as applied for, shall be examined as a whole, with all other elements, if any, included.

 

  1. As regards the standard for determining likelihood of confusion for 3D marks, the EUIPO basically applies same principles for two-dimensional marks to be applied equally to three-dimensional marks. Upon a notice of opposition, the EUIPO shall judge relevant factors: (a) similarity of the goods and services; (b) the relevant public and the level of attention; (c) similarity of the signs taking into account their distinctive and dominant elemetns; and (d) the distinctiveness of the earlier mark. In principle, a two-dimensional image may be a potential bar under relative grounds for refusal against a three-dimensional mark for related or identical goods/services. For example, EUTM reg. no. 9849191 for “inhalers” and “inhalation products used for the treatment of asthma and chronic pulmonary disease” was declared invalid by the EUIPO Board of Appeal in January 2019 by reason of a likelihood of confusion with Glaxo Group’s earlier Hungarian reg. no. 173643 for “inhalers”

 

Contested 3D mark

Earlier 3D Mark

EUTM Reg. No. 9849191

 

Hungrarian Reg. No. 173643

 

  1. A rejected 3D mark by the EUIPO may be overcome by a claim of having acquired distinctivenss. However, Article 7(3) EUTMR[2] merely enables trademarks which do not comply with Article 7(1)(b),(c) or (d) to be registered provided it has become distinctive in relation to the goods or services for which registration is requested as a consequence of the use which has been made of it. The standard for acquired distinctives must exist, in the perception of the public, a link between the sign and the goods and services in the sense that the relevant class of persons, or at least a significant proportion thereof, identify the goods and services as originating from a particular undertaking because of the trade mark. According to the EUIPO’s practice, in establishing acquired distinctiveness, account may be taken of, inter alia, the following factors: (i) the market share held by the mark with regard to the relevant goods or services; (ii) how intensive, geographically widespread and long-standing use of the mark has been; (iii) the amount invested by the undertaking in promoting the mark for the relevant goods or services; (iv) the proportion of the relevant public who, because of the mark, identifies the goods or services as originating from a particular undertaking.

 

Bross & Partners, an intellectual property company ranked First (Tier 1) by Legal 500 Asia Pacific, has experience in resolving complicated IP disputes including trademarks, copyrights, patents, plant varieties in Vietnam and abroad.

 

Please contact: Vinh@bross.vn; mobile: 0903 287 057; Zalo: +84903287057; Skype: honor.bross; Wechat: Vinhbross2603.



[1] Article 3 Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015

[2] Article 7 EUTMR. Absolute grounds for refusal

  1. The following shall not be registered:
    • (a) signs which do not conform to the requirements of Article 4;
    • (b) trade marks which are devoid of any distinctive character;
    • (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
    • (d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;
    • (e) signs which consist exclusively of: (i) the shape, or another characteristic, which results from the nature of the goods themselves; (ii) the shape, or another characteristic, of goods which is necessary to obtain a technical result; (iii) the shape, or another characteristic, which gives substantial value to the goods;
    • etc.
  2. Paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Union.
  3. Paragraph 1(b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested as a consequence of the use which has been made of it.

Article 4 EUTMR. Signs of which an EU trade mark may consist

An EU trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:

  • (a) distinguishing the goods or services of one undertaking from those of other undertakings; and
  • (b) being represented on the Register of European Union trade marks ('the Register'), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.

 

 

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