A shape can be protected by the mark law as a three-dimensional mark. This possibility is explicitly provided by paragraph c) of Article L.711-1 of the Industrial Property Code, and by article 3 of the Directive 89/104/EC.
It is possible to protect the product per se (the octagonal form of the VICHY pastilles), its packing (the SMARTIES cylindrical tube made of hardboard with a rim at the end parts). It is also possible to combine with a verbal mark (the form of the bottle with the writing down of the label).
The main conditions of validity of a three-dimensional mark are the same as those for a figurative or verbal one.
The mark must be available (Article L. 711-4)
The mark right is an acquisition right and not a creation right. So, the availability concept of the mark right (with respect to prior rights) must not be confused with the novelty or originality concept of the design right or of the copyright (with respect to any prior right).
Therefore, the three-dimensional mark can be anticipated by a design in force but not by a design in public domain.
The mark must be of a distinctive nature (Article L. 711-2)
However, all the forms belonging to the public domain cannot be filed as marks. In fact, the function of the mark is to distinguish a product from those of the competitors.
The distintive nature of the mark is considered according to the products and/or services that it designates.
For example, a packing in the form of a lemon is descriptive to designate a lemon based beverage, whereas the form of a cob of bread is not descriptive for a cheese.
A shape which is usual in a field cannot be registered. This is for that reason that the filing which protected the truncated shape with splines for turnable out rice cakes has been annulled.
The shape should not give the product its substantial value (item c of Article L. 711-2) (the distinctive nature may be acquired by use except in this case).
It is not possible to protect the shape of a product if said shape is not restricted to this distinctive function. For example, supposing that a bottle made of crystal has a characteristic shape, the consumer will purchase the bottle taking into account this form because of its "substantial value". A mark will not protect the bottle per se, but will be valid to designate a fragrance for example. The same applies for clothing articles. Then it is advisable to protect such shapes by the design law.
The shape does not have a technical character
The protection conferred by the mark law must not debar the competitors of the use of this shape which is necessary taking into account its technical effect. This is the case for example of the LEGO brick, the studs of which are useful for attaching two bricks together. The LEGO brick was already protected by a patent, and the protection by the mark right (right which is renewable ad infinitum) is considered as an abuse of right in this case.
However, it is possible to cumulate a protection by the mark right and by the design right. It is even sometimes advisable to file both a mark application and a design application in order to protect a form, the conditions of validity being different (absolute novelty at the creation date for the model, rule of speciality of designated products for the mark...).
By a judgement of June 18, 2002 (C-299/99 - Remington), the ECJ has ruled:
1. There is no category of marks which is not excluded from registration by Article 3(1)(b), (c) and (d) and Article 3(3) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks which is none the less excluded from registration by Article 3(1)(a) thereof on the ground that such marks are incapable of distinguishing the goods of the proprietor of the mark from those of other undertakings.
2. In order to be capable of distinguishing an article for the purposes of Article 2 of the Directive, the shape of the article in respect of which the sign is registered does not require any capricious addition, such as an embellishment which has no functional purpose.
3. Where a trader has been the only supplier of particular goods to the market, extensive use of a sign which consists of the shape of those goods may be sufficient to give the sign a distinctive character for the purposes of Article 3(3) of Directive 89/104 in circumstances where, as a result of that use, a substantial proportion of the relevant class of persons associates that shape with that trader and no other undertaking or believes that goods of that shape come from that trader. However, it is for the national court to verify that the circumstances in which the requirement under that provision is satisfied are shown to exist on the basis of specific and reliable data, that the presumed expectations of an average consumer of the category of goods or services in question, who is reasonably well-informedand reasonably observant and circumspect, are taken into account and that the identification, by the relevant class of persons, of the product as originating from a given undertaking is as a result of the use of the mark as a trade mark.
4. Article 3(1)(e), second indent, of Directive 89/104 must be interpreted to mean that a sign consisting exclusively of the shape of a product is unregistrable by virtue thereof if it is established that the essential functional features of that shape are attributable only to the technical result. Moreover, the ground for refusal or invalidity of registration imposed by that provision cannot be overcome by establishing that there are other shapes which allow the same technical result to be obtained.
The cited trademarks are the property of their titular.
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