IEEE Consumer Electronics Magazine - October 2016 - 118

IP Corner

Registration of the
Three-Dimensional Shape
of Consumer Products as
Trademarks in the EU
By Valentina Nieß

nder current European Union
(EU) law, it is possible to register not only traditional marks,
such as word and figurative
marks, but also nontraditional marks,
such as colors and three-dimensional
(3-D) shapes. Such a 3-D trademark
for the shape of a consumer product
constitutes an attractive asset for a
manufacturer, since such trademark
protection-unlike design or patent
protection, for example-is potentially
infinite in duration. At the same time, a
3-D trademark provides the manufacturer with a monopoly on such a shape
for certain goods, allowing it to effectively prosecute infringements by competitors. This article will provide some
basic guidance in light of recent case
law of the Court of Justice of the European Union (CJEU) related to the hurdles companies must overcome to
register the shapes of their products as
3-D trademarks in the EU.

HURDLE 1: IS IT A SIGN?

[see Dyson Ltd. v. Registrar of Trade
Marks (C-321/03)]. In this case, Dyson
wanted to obtain a trademark for a
transparent dustbin forming part of the
external surface of a vacuum cleaner-
not for a particular shape of such a dustbin but for all the conceivable shapes of

A 3-D trademark for
the shape of a consumer
product constitutes an
attractive asset for a
manufacturer.
a transparent dust-collecting bin. The
CJEU held that such a trademark cannot be registered because the applied
mark was not a so-called sign. In stead, the court ruled, the subject of
the application was a mere product
property. The court argued that if it
agreed to register such a trademark,
its owner would be entitled to prevent
competitors from marketing vacuum
cleaners having any kind of transparent dust-collecting bin on their external surface, which would give such a
trademark owner an unfair competitive advantage.

Under EU law, "...a trademark may
consist of any sign capable of distinguishing goods or services of one
undertaking from those of other undertakings." An example of a product
shape not satisfying this requirement
was a trademark application by Dyson
Ltd. that was rejected by the CJEU in a
judgment delivered on 25 January 2007

HURDLE 2: ARE THERE ANY
GROUNDS FOR REFUSAL?

Digital Object Identifier 10.1109/MCE.2016.2590221
Date of publication: 22 September 2016

Even if a sign is capable of being registered as a trademark, manufacturers
face three further specific grounds of

118 IEEE Consumer Electronics Magazine

october 2016

refusal applying only to shape marks.
Under EU law, a sign cannot be registered if it consists exclusively of a shape
1) that results from the nature of the
item itself, 2) that is necessary to obtain
a technical result, or 3) that gives substantial value to the item.
The first ground for refusal relates
to the fundamental distinction between
the trademark and the product itself and
means that a registration will be refused
if the applied-for shape stems from the
very nature of the product. In the past,
there has been some discussion of
whether this ground applies only when
no alternative shapes are available. This
debate, however, was resolved by the
CJEU in its decision in Hauck v. Stokke

FIGURE 1. The Tripp Trapp children's chair.

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