AIPPI 2018 - Study Question - Registrability of 3D trademarks

Study QuestionSubmission date: May 2, 2018

Sarah MATHESON, Reporter GeneralJonathan P. OSHA and Anne Marie VERSCHUUR, Deputy Reporters GeneralYusuke INUI, Ari LAAKKONEN and Ralph NACK, Assistants to the Reporter GeneralRegistrability of 3D trademarks

Responsible Reporter(s): Anne Marie VERSCHUUR

National/Regional Group

France

Contributors name(s)

Aurélia Marie, Sophie Micallef, Géraldine Arbant, Axelle Collin, Coralie Devernay, Edouard Fortunet, Julie Gemptel, Fanny Cony, Frédéric Glaize,

Laurine Janin-Reynaud, Esther Hagege, Anne-Sophie Leroi, Marie-Elvire de Moro-Giafferi, Stefan Naumann, Stéphanie Zeller

e-Mail contact

sophie.micallef@hoyngrokh.com

I. Current law and practice

Please answer the below questions with regard to your Group's current law and practice.

1. Are 3D Shapes* registrable as a trademark? Please answer YES or NO.

If you have answered NO, please skip Questions 2 to 9 and proceed to Question 10.

*This Study Question focuses on signs consisting of 3D shapes comprising solely the three-dimensional shape of goods or packaging without any addition (3D Shapes). (see further para. 12 of the Study Guidelines). Yes(Explanation is Optional)

2. Can a 3D Shape be inherently distinctive? If YES, what test is applied in order to establish if it is inherently distinctive?YesWhat test is applied in order to establish if it is inherently distinctive?

There is no ‘test ‘, but a specific approach has been developed for trade marks which consist of signs which combine with the appearance of products.

The Intellectual Property Code (referred to below as: ‘IPC ‘) expressly provides in article L.711-1 c) that ‘shapes, particularly those of the product or its packaging’ may constitute signs which are protectable as trade marks. Article 3 of Directive 2015/2436 of 16 December 2015 approximating the laws of the Member States relating to trade marks (of which the provisions of interest to us must be transposed by 14 January 2019, referred to below as: ‘ the 2015 Directive’) and article 4 of Regulation 2017/1001 of 14 June 2017 on the European Union trade mark (which came into force on 1 October 2017, referred to below as : ‘ the 2017 Regulation’) mention this type of sign among those likely to constitute trade marks.

Article 3 a) of the 2015 Directive primarily links the protection of these trade marks with their capacity to ‘distinguish the products or services of an undertaking from those of other undertakings’. The 2017 Regulation imposes the same condition in its article 4 a).

Equivalent provisions were included in article 3.1.b) of the First Council Directive 89/104/EEC of 21 December 1988 approximating the laws of the Member States relating to trade marks (referred to below as : ‘the 1988 Directive’) : ‘The following shall not be registered or if registered shall be liable to be declared invalid: (…) b) trade marks which are devoid of any distinctive character’.

These provisions, which are considered to express an autonomous distinctiveness requirement do not appear as such in the IPC (It should be noted that the 2015 Directive has yet to be transposed into French law). That being so, the French courts have been able to invoke the 1988 Directive in order to hold that ‘the distinctive character which a sign must meet in order to be registered is an autonomous requirement which is not inferred simply from the fact that this sign would be neither generic nor descriptive of the properties of the products referred to in its registration’ (CA Paris, 25 September 2013, SA Grands Moulins de Paris before the Dir. Gen. of the INPI (French National Institute for Industrial Property), RG 12/21495. See also: CA Paris, Division 5 Ch. 2, 13 December 2013, Société Des Produits Nestlé before the Dir. Gen. of the INPI, RG 13/09001; CA Paris, 19 June 2009, Unilever v Rolland, RG 07/17988, Cass. Com. (Court of Cassation, Commercial Chamber) 26 October 2010, appeal no G 09-69.687, TGI Paris, 31 March 2016, SA Ice IP v SA BPlus, RG 15/03632, TGI (Court of First Instance) Paris, 20 October 2016, Générale Biscuit v Griesson de Beukelaer et autres, RG 15/05010).

Given this autonomous requirement of distinctiveness, the Court of Justice has ruled that in order to assess the distinctive character of a three-dimensional trade mark consisting of the shape of the product, ‘the criterion applied does not need to be any stricter than that used for other types of trade marks’ (ECJ, 8 April 2003, joined cases C-53/01 to C-55/01, Linde AG, Winward Industries Inc. and Rado Uhren AG, reply to the first question referred for a preliminary ruling).

In this judgment, the Court further reiterated (§41) that ‘a trade mark's distinctiveness must be assessed by reference to, first, the goods or services in respect of which registration is sought and, second, the perception of the relevant persons, namely the consumers of the goods or services. According to the Court's case-law, that means the presumed expectations of an average consumer of the category of goods or services in question, who is reasonably well informed and reasonably observant and circumspect’ (Principles taken from the judgments of 16 July 1998, Gut Springenheide and Tusky, Case C-210/96, [1998] ECR I-

4657, paragraph 31, and 18 June 2002, Philips, Case C-299/99, ECR I-5475, paragraph 63, to which the Court refers in the Linde judgment).

In practice, certain elements of the grounds of this judgment have given rise to the subsequent development and embodiment of the principle according to which the consumer is not generally inclined to perceive the shape of a product or its packaging as an indicator of origin, in contrast to word marks or figurative marks. This was the point of view taken by the government of the United Kingdom and the Austrian government in Linde (‘In the case of word and figurative marks, the average consumer is accustomed to understanding that words, logos and similar signs are likely to have a significance in denoting the trade origin of the goods to which they are applied. In contrast, in the case of many products their main features are influenced by their function, and there are therefore many similarities between products of the same type, such that no product stands out particularly. In addition, a shape's distinctiveness must also be assessed in the context of the normal range of variations for the product in question. If the different features of the shape fall within the normal range of variation of the product, the United Kingdom Government argues that it is unlikely that the shape will be accorded trade mark significance by the average consumer.’; Linde §35) and which was agreed by the Court (Linde §48).

This principle was embodied in the Henkel judgment (ECJ, 12 February 2004, Henkel KGaA, case C-218/01) for shapes composed of product packaging (Henkel §52) and subsequently adopted quasi-systematically by the Office and courts of the European Union.

However, one exception should be mentioned: in a judgment on 3 December 2003 (General Court of the EU, 3 December 2003, case T-305/02, Nestlé Waters France v OHMI), the Court held that, in the sector in question ‘certain operators have for several years sought in the shape of the packaging the means to differentiate their goods from those of the competition and to attract the public's attention. It thus appears that the average consumer is quite capable of perceiving the shape of the packaging of the goods concerned as an indication of their commercial origin, in so far as that shape presents characteristics which are sufficient to hold his attention’.

Even if, as here, examples of other bottles had been placed on the file (§37), the Court did not look for a basis for comparison with a standard or with the shapes usual for the sector. However, in Community case-law, the process adopted in this judgment remains isolated.

The French case-law is aware that there is some discrepancy between these two approaches, which is no doubt explained by the fact that the autonomous requirement of distinctiveness is not explicitly stated in French law. If some decisions follow the approach reached by Community case-law (cf. judgments SA Grands Moulins de Paris and others cited above), others do not necessarily consider if the shape in question is sufficiently far removed from the standards or customs of the sector (CA Paris, Division 5 Ch. 1, 6 April 2011, RG no 09/17716, Palladium v EXHL ; CA Paris, Division 5 ch. 1, 25 November 2014, RG no 13/04029, Gucci France, Guccio Gucci SPA v SAS VETIR : subject to an appeal, which did not however relate to the validity of the three-dimensional trade mark; Court of Cassation, Commercial Chamber, 22 November 2016, judgment no 997 F-D).

A combination of two factors determines a specific approach to assessing the inherent validity of 3D shapes. The first factor concerns the assessment of distinctive character according to ‘the presumed expectations of an average consumer of the category of goods or services in question, who is reasonably well informed and reasonably observant and circumspect’. The second factor consists in the principle according to which ‘an average consumer is not in the habit of making assumptions about the origin of goods based on their shape or that of their packaging in the absence of any graphic or textual element’.

Therefore, in practice, we conclude the opposite to the first point judged in Linde: there is indeed a stricter assessment for trade marks composed of a 3D shape. Moreover, since the

Linde judgment, it is expressly acknowledged that the approach adopted makes it more difficult for 3D shapes to be protected as trade marks (‘It is nevertheless true, (…) that it may in practice be more difficult to establish distinctiveness in relation to a shape of product mark than a word or figurative trade mark. But whilst that may explain why such a mark is refused registration (…)’ - Linde, §48).

However, this is the approach which has been endorsed and which may be likened to a form of ‘test’.

The burden of proof on the applicant in relation to the significant divergence from the standards and customs of the sector is an important aspect of the problem. As the principle is that the burden of proof lies with the applicant, the nature of this proof varies according to whether the applicant wishes to obtain the protection or cancellation of a trade mark.

l Where the applicant is the applicant for registration, it is the responsibility of that person to prove that his trade mark differs significantly from the standards and customs of the sector. It is not therefore a case of the Office proving that the trade mark does not differ from the standards of the sector, because of its closeness to the shapes which constitute the standard or customs of the sector (See for example EUIPO, Second Board of Appeal, 22 January 2014, Bongrain SA. case R 1560/2013-2, §28 : ‘ to the extent that the applicant avails itself of the distinctive character of the trade mark applied for, in spite of the examiner’s analysis based on [practical] experience [of marketing widely consumed goods, ‘ likely to be known to all‘], it is for the applicant to provide specific and substantiated details establishing that the trade mark applied for possesses either an intrinsic distinctive character or a distinctive character acquired through use’).l Where the applicant brings invalidity proceedings against a trade mark in relation to a 3D shape which has been granted registration, the applicant must prove that the trade mark of which he is challenging the validity does not differ significantly from the standards or customs of the sector.

3. Can a 3D Shape acquire distinctiveness? If YES, what test is applied in order to establish if it has acquired distinctiveness?YesWhat test is applied in order to establish if it has acquired distinctiveness?

In theory, the last paragraph of article L 711-2 of the IPC provides that any trade mark can acquire a distinctive character through use, except ‘signs which consist exclusively of the shape which results from the nature or function of the goods themselves, or which gives the goods their substantial value.’

This text is the implementation in national law of the Trade Mark Directive, and more precisely of article 3 e) ii) (1988 Directive, codified by the 2008 Directive. This directive has been recast by the 2015 Directive, not yet transposed into national law. The amendments to the 2008 Directive are shown in brackets).

‘The following shall not be registered or, if registered, shall be liable to be declared invalid

1) e) signs which consist exclusively of:

(ii) the shape or another characteristic of goods which is necessary to obtain a technical result.

This is also the case for European trade marks (Art 7 §3 of the 2017 Regulation).

So, in the same way as other signs, three-dimensional signs can acquire a distinctive

character through use, except for the signs described in the preceding paragraph (see the following questions).

In practice, the test applied is the same as that applied to all signs: proof of continuous, intense and long use of the sign, such that it is identified by the public interested in the goods and/or services in question as originating from a specific undertaking.

In this regard, the court, like the INPI, takes the following factors into account:

l market share held by the trade mark;l intensity, geographical scope and duration of use of the trade mark;l extent of the investments made by the undertaking to promote it;l proportion of interested parties who identify the goods as originating from a specific undertaking because of the trade mark;l statements from chambers of commerce or from industry or from other professional associations.

It is also stated, in respect of European trade marks, that the EUIPO requires the acquisition of distinctive character through use to be established throughout the European Union.

As for French trade marks, up until now, in the context of the assessment of a trade mark application, the INPI has required that the distinctive character has been acquired through use which predates the filing of the application. Proof of acquisition of distinctive character through use must therefore predate the filing date.

In practice, it has been observed that the INPI tends to reject arguments and documentation from the applicant which seeks to establish that the sign applied for has acquired a distinctive character through use without detailing the reasons which have led it to that conclusion.

In the context of an application for a declaration of invalidity, the Court of Cassation recently held that the distinctive character of the trade mark could have been acquired through use predating its registration (Cass, civ. 6 December 2016, ‘Venteprivée'). In that case, the Court of Appeal had taken into account of the date on which the court made its decision (CA Paris, 31 March 2015, no 2013/23127).

The 2017 Directive clearly specifies the date which should be taken as the basis for assessing distinctive character acquired through use:

l In the context of a registration: the date to be taken into account is the filing date of the application (Article 4 §4) but States are able to take into account the date of registration (Article 4 §5).l In the context of an application for a declaration of invalidity, whether for an initial claim or a counterclaim: date of the application for a declaration of invalidity.

4. Will a 3D Shape be refused registration, or is a 3D Trademark* liable to be declared invalid, if it consists exclusively of the shape, or another characteristic, which results from the nature of the goods themselves? If YES, please describe what test is applied.

*3D Shapes registered as trademarks (see also para. 14 of the Study Guidelines)YesPlease describe what test is applied.

Article L711-2 c) of the IPC provides that signs consisting exclusively of the shape imposed by the nature or function of the goods, or conferring on the goods their substantial value, are

devoid of distinctive character and cannot acquire distinctive character through use.

Firstly, it should be noted first and foremost that the exclusion of the signs provided for in article 3 §1. e) of Directive 2008/95/EC of 22 October 2008 (referred to below as: ‘the 2008 Directive?) just like that provided for in article 4 §1. e) of the 2015 Directive is differentiated from the criterion of distinctiveness, whereas in the French text the criterion of the shape imposed by the nature of the goods is linked to the issue of distinctive character.

Secondly, and still contrary to Union law (Article 4 §1. e) of the 2015 Directive), the French text seems to divide trade marks which are devoid of distinctive character into three categories pursuant to article L. 711-2 c) of the IPC: ‘signs consisting exclusively of the shape imposed by the nature or function of the goods ? and those ‘conferring on the goods their substantial value', the first two categories sometimes seeming to merge into one. Union law for its part very clearly distinguishes 3 categories and refers to the notion ‘of obtaining a technical result' which has not been taken up, as such at least, by the French law.

In the Tripp Trapp judgment (ECJ, C-205/13), it was noted that ‘the concept of ‘a shape which results from the nature of the goods themselves’ means that shapes with essential characteristics which are inherent to the generic function or functions of such goods must, in principle, also be denied registration’ (§25).

In the following paragraph (§26), it is noted that this ‘nature? of the goods [consisted of] the ‘essential characteristics' of the product which are linked to its function. So, the concepts of nature and function appear to be closely linked.

In conclusion, the Court held that the ground for refusal relating to the shape imposed by the nature of the product itself ‘may apply to a sign consisting exclusively of the shape of a product with one or more essential characteristics which are inherent to the general function or functions of that product and which consumers may be looking for in the products of competitors‘.

In the directives relating to examination of EU trade marks, the EUIPO clarifies the criterion and cites examples of its application.

The EUIPO states that: ‘This ground for refusal applies where the sign, whether two-dimensional or three-dimensional, consists exclusively of the natural shape of the product, that is so-called ‘natural’ products which have no substitute: for example, the realistic representation of a banana for bananas.

The same would be true of so-called ‘regulated’ products (whose shape or another characteristic is prescribed by standards), such as a rugby ball. Aside from natural and regulated products, shapes which are inherent in the generic function or functions of the product must be denied registration. Thus, the Directives of the EUIPO themselves link the criterion of nature with that of function.

As far as we are aware in French case-law, the criterion of shape resulting from the nature of products is seldom the only factor taken into account but almost always dealt with in combination with the criterion of function, so that it is difficult to interpret what is meant by ‘nature of the product? as opposed to its ‘function’. (ex: CA Paris, 13 December 2013, Nestlé v INPI, ‘Kitkat‘ on the shape imposed by the nature or function of the product', Cass, Crim, 23 March 2016, ‘Rubikscube‘ the characteristics of the three-dimensional sign are imposed by the nature and function of a three-dimensional puzzle').

Two decisions have attempted to apply the ground for refusal relating to the shape imposed by the nature of the product.

In the first, the Versailles Court apparently considered that the nature of the product was synonymous with ‘necessary designation' or ‘ordinary designation' of the product. In examining whether article L. 711-2 c) was applicable to the trade mark in question, the Court notably referred to the dictionary definition of the description of the shape of the trade mark as it appeared in the registration (CA Versailles 12 January 2006, Miniplus v Carrefour). However, in that decision the Court appears to have confused the issue of descriptive character from article L. 711-2 b) with that of the shape imposed by the nature of the product from article L. 711-2 c), since it initially concluded that the trade mark was descriptive then that it had ‘all the necessary characteristics of the nature of paper or cardboard products, referred to in the trade mark application'.

In the second, the Court distinguished the concept of nature of the product from that of ‘necessary, generic or usual designation of the product', stating that the first of these concepts referred to the very essence of the product and not to one of its characteristics (Paris Court of First Instance, 10 April 2015, Humeau v Carrefour).

The Court began by examining whether the three-dimensional trade mark in question had shape characteristics imposed by the nature of the product, in that case a sole, which were therefore ‘a general shape matching that of the foot, cut-outs here in the form of nodes to prevent slipping, a more distinct relief at the heel end, a trim to ensure overall stability'.

At the same time, the Court raised the question of whether the shape was imposed by the function of the product, namely to be non-slip or to act as a sole. To this end, the Court held that the elements ‘relating to the number and position of the nodes at their elevation and to the shape and height of the trim are not sufficient to distinguish and individualise the shape adopted with respect to the requirements dictated by the function of the product‘.

Thus, even if some courts have attempted to dissociate the concepts of nature and function, these two concepts are very often linked and the boundary between them is sometimes difficult to define precisely, depending on the registered trade mark.

5. Will a 3D Shape be refused registration, or is a 3D Trademark liable to be declared invalid, if it consists exclusively of the shape, or another characteristic, of goods which is necessary to obtain a technical result? If YES, please describe what test is applied.YesPlease describe what test is applied.

In relation to national trade marks, article L.711-2 of the IPC provides:

‘the following are devoid of distinctive character: […]

c) signs which consist exclusively of the shape imposed by the nature or function of the product […]

Distinctive character may be acquired through use, except in the case provided for in c).'

With regard to EU trade marks, article 59 of the 2017 Regulation states:

An EU trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings

a) where the EU trade mark has been registered contrary to the provisions of article 7'.

Article 7(1)( e) of the 2017 Regulation provides: ’The following shall not be registered or are liable to be declared invalid if they are registered

1) e) signs which consist exclusively:

(ii) of the shape, or another characteristic, of goods which is necessary to obtain a technical result.

l European case-law

The preliminary rulings of the European Court of Justice are binding on the French courts. Studying the case-law of the ECJ, including that relating to applications for declarations of invalidity of EU trade marks, enable[s] us to identify certain assessment criteria, namely:

l Protection of the public interestl Determine whether the functional and essential characteristics of the shape are attributable only to the technical result

l Methods of identifying and analysing the essential characteristicsl Exclusion of the ‘existence of other shapes which permit the same technical result to be obtained’ criterion

l Protection of the public interest

l ECJ, 18 June 2002, C-299/99 (Philips v Remington Consumer Products Ltd)

The purpose of excluding signs consisting exclusively of the shape imposed by the technical function of the product is to prevent protection of the trademark right from conferring on its holder a monopoly on technical solutions or functional characteristics of a product which may be required by the user in competing products.

l ECJ, 18 September 2014, C-205/13 (Hauck Gmbh v Stokke A/S)

The Court stresses that the concept of ‘shape imposed by the nature of the product itself' implies that shapes whose essential characteristics are inherent in the generic function or functions of the product should in principle not be registered.

The Court explains that the reservation of such characteristics to a single economic operator would preclude competing undertakings from being able to give their products a shape which is convenient for their use. Furthermore, these are essential characteristics which the consumer might look for in competing products which are intended to fulfil an identical or similar function.

l ECJ, 16 September 2015, C-215/14 (Société des produits Nestlé v Cadbury UK LTD)

The Court recalls that the public interest must be the guideline for assessing these grounds for refusal to register and explains that the grounds for refusal are preliminary obstacles to registration and independent of each other, such that if a single ground applies in full, that is sufficient to preclude registration.

l In the same vein, ECJ, 6 March 2014 (C-337/12 P to C-340/12 P - PI-Design Ag, Bodum France Sas, Bodum Logistics A/S v YOSHIDA Metal Industry Co. Ltd) - (decision on appeal – EC trade mark – application for a declaration of invalidity)

l The functional and essential characteristics of this shape are attributable only to the technical result

l ECJ, 18 June 2002, C-299/99 (Philips v Remington Consumer Products Ltd)

The Philips judgment ruled that a sign consisting exclusively of the shape of a product cannot be registered under this provision, if it is shown that the functional and essential characteristics of that shape are attributable only to the technical result.

l Methods for identifying and analysing the essential characteristics

l ECJ, 14 September 2010, C-48/09 (Lego Juris A/S v OHMI) - (decision on appeal – EC trade mark – application for a declaration of invalidity)

According to the Court ‘the competent authority may either base its assessment directly on the overall impression produced by the sign, or first examine in turn each of the components of the sign'.

In order to determine the essential characteristics of the three-dimensional trade mark, it is necessary to take into account elements other than those of the trade mark application.

‘The identification of the essential characteristics of a three-dimensional sign (..) may, depending on the case, and in particular in view of its degree of difficulty, be carried out by means of a simple visual analysis of the sign or, on the other hand, be based on a detailed examination in which relevant criteria of assessment are taken into account, such as surveys or expert opinions, or data relating to intellectual property rights conferred previously in respect of the goods concerned' (paragraph 71).

l ECJ, 6 March 2014 (C-337/12 P to C-340/12 P (PI-Design Ag, Bodum France Sas, Bodum Logistics A/S v YOSHIDA Metal Industry Co. Ltd) - (decision on appeal – Community trade mark – application for a declaration of invalidity)

In order to determine the essential characteristics of the three-dimensional trade mark, it is necessary to take into account elements relating to effective use of the trade mark following its registration.

‘material which, although subsequent to the date of filing the application, enables conclusions to be drawn with regard to the situation as it was on that date can, without error of law, be taken into consideration (paragraph 60)

‘It follows that, in holding that the provisions at issue preclude consideration of the actual use made of the trade mark following its registration, the General Court erred in law' (paragraph 61).

l ECJ, 10 November 2016, C-30/15 (Rubik’s Cube) - (decision on appeal – EU trade mark – application for a declaration of nullity)

In order to determine the essential characteristics of the three-dimensional trade mark, it is necessary to take into account additional circumstances relating to the function of the specific product in question.

‘It follows that the General Court interpreted the criteria for assessing (…) too narrowly, in that it took the view, (…) that for the purpose of examining the functionality of the essential

characteristics of the sign concerned, in particular the grid structure on each surface of the cube, the shape at issue, as represented graphically, should have been taken as a basis, without necessarily having to take into consideration any additional circumstances which an objective observer would not have been able to ‘fathom precisely’ on the basis of the graphic representations of the contested mark, such as the rotating capability of individual elements in a three-dimensional ‘Rubik’s Cube’-type puzzle' (paragraph 51).

Once the essential characteristics of the three-dimensional trade mark have been identified, the competent authority must check whether all these characteristics fulfil the technical function of the product (paragraph 72), bearing in mind that ‘article 7(1)(e) (ii) of Regulation no 40/94 cannot be applied where the application for registration as a trade mark relates to a product form in which a non-functional element such as an ornamental or fanciful element plays an important role'. However, these characteristics may have different functions.

It also states that for identification of the essential characteristics the perception of the target public is not a decisive factor (paragraph 75). However, this perception of the target public may constitute a useful assessment element for identifying the essential characteristics of the sign (paragraph 76).

‘The presumed perception of the sign by the average consumer is not a decisive factor in the context of the application of the ground for refusal stated in article 7 (1), sub-paragraph e), ii), of Regulation no 40/94 but, at most, may constitute a useful assessment element for the competent authority where it identifies the essential characteristics of the sign.'

l Conclusions of the Advocate General, 22 June 2017, C-163/16 (Christian Louboutin SAS v Van Haren)

In the Louboutin case, the Advocate General analyses the applicability of article 3(1)(e) (ii) of the 2008 Directive to signs consisting of the shape of the product and a specific colour.

The Advocate General makes it clear that the objective of this provision is to prevent trade mark protection from granting its proprietor a monopoly on technical solutions or functional characteristics of a product which a user is likely to seek in the products of competitors. The Advocate General makes it clear that the presence of a colour applied to an element of the surface of the goods can be regarded as a characteristic reflected in the shape of the goods which can be an essential practical characteristic, such that the monopolisation of colour, in relation to the shape of the goods, would remove the freedom of competitors to offer goods incorporating the same functionality (e.g. safety jacket, fire extinguisher or heat-reflecting products).

The ECJ has not yet made its decision in this case.

l Exclusion of the criterion relating to the existence of other shapes which allow the same technical result to be obtained

l ECJ, 18 June 2002, C-299/99 (Philips v Remington Consumer Products Ltd)

The Philips judgment ruled that demonstrating the existence of other shapes which allow the same technical result to be obtained is not such as to overcome the ground for refusal or the invalidity of the registration. It is a rejection of the multiplicity of shapes criterion.

l In the same vein, ECJ, 16 September 2015, C-215/14 (Société des produits Nestlé v Cadbury UK LTD)

In terms of the shape exclusively necessary to obtain a technical result, the Court makes it

clear that this ground refers to how the product functions and not how it is manufactured, since what matters to the consumer is its functionality.

l French case-law

l The functional and essential characteristics of the shape are attributable only to the technical result

l CA Versailles, 12 January 2006, no 04/04849 (S.A. Miniplus v S.A.S. Kappa Siemco)

In order to examine the validity of the trade mark, the Court investigates whether ‘the essential characteristics are or are not uniquely attributable to the pursuit of a technical result ?.

It declares the invalidity of this trade mark: ‘the shape constituting the trade mark registered is attributable exclusively to the technical result sought, the 'double single face' with exposed flutes has all the necessary characteristics of the function of paper or cardboard products referred to in its registration submission and is therefore not suitable for any protection whatsoever under trade mark law ? and notes that ‘ the aesthetic decorative concerns expressed by [the applicant] are ineffective in giving its trade mark a distinctive character, if they appear largely subsidiary with regard to the technical results to which the shapes of its corrugated cardboard are primarily subject'.

l Cass.Com, 30 May 2007, no 05-16898 (Philips v Raynovac)

In order for the shape to be considered functional, it is sufficient that the essential characteristics of the trade mark in question produce a technical result or contribute to such a result.

The Court dismisses the appeal on the grounds that ‘having therefore rightly rejected the summary from Philips, according to which it would be sufficient that the functional elements constituting the sign have an aesthetic aspect for that sign to be capable of constituting a valid trade mark, the judgment observes that all the characteristics of the trade marks cited produce a technical result or contribute to such a result'.

l CA Paris, 19 June 2009, no 2007/17988 (Unilever v Rolland)

The exclusively functional character of a shape cannot be deduced from the simple fact that the said shape is obtained by implementation of a patented process.

l INPI, 11 December 2013, decision to refuse registration

The INPI refuses registration of the three-dimensional trade mark on the grounds that ‘the mark applied for, which shows parts which are assembled into a tube and the manner in which they are assembled, will be understood by the average consumer as fulfilling above all a technical and functional role and in no way as an indication of the commercial origin of the goods in question by allowing him to distinguish, without any possibility of confusion, the abovementioned products from those of different origin. The mark applied for is therefore devoid of distinctive character and is not likely to perform a specific function'.

l TGI Paris, 10 April 2015, no 13/11016 (Carrefour Hypermarchés v Humeau Beaupreau)

According to the Court, it does not matter that the essential functional elements also exhibit aesthetic aspects in addition. The Court thus reiterates that ‘the number and position of the nodes and their height as well as their shape and the height of the trim are not sufficient to distinguish and individualise the adopted shape in relation to the requirements dictated by

the function of the product'.

l TGI Paris, 20 October 2016, no 15/05010 (Mondelez v Griesson de Beukelaer)

The Court holds that ‘if, as the defendant notes, the end which is not coated in chocolate can permit the user to grasp and consume the biscuit without dirtying his hands, the sign should be understood as a whole and the uncoated end is merely one element of the sign which is also characterised by its special long slim shape. Furthermore, even if the uncoated end can have a practical function, this characteristic is not imposed by the technical function of the biscuit referred to in the registration'.

l TGI Paris, 22 February 2018, no 14/05292 (Ceramtec v C5 Medical Werks)

The Court takes the view that a colour ‘resulting from a technical effect could not be used objectively for commercial identification of the product since it was perceived by the intended public as a natural element of the material and a performance indicator ? and that ‘the colour itself and the colour associated with the shape of the beads [was] ordinary and functional in character'.

l French case-law which is inconsistent with the evaluation grid adopted by the ECJ

However, there are French decisions which take the view that a multiplicity of shapes is an indication of the absence of an exclusively functional character. These decisions thus adopt a more flexible stance, contrary to that adopted by the case-law of the ECJ.

l CA Paris, 12 December 2014, no 14/06477 (Alpargatas SA – Alpargatas Europe SLU- SARL Alpargatas France v SARL JA Diffusion)

l CA Paris, 27 January 2015, no 2013/04001 (SARL Julma v Bottega Veneta & Bottega Veneta International)

The Court relies on the multiple shapes of bags and fasteners in taking the view that the shapes were distinctive and not functional owing to their decorative and arbitrary shape.

l CA Bordeaux, 5 November 2015, no 14/00502 (SAS Folies Douces v Bourjois)

The Court merely points out that ‘this cylindrical shape, countered and transparent with oblique grooves just above the centre of the bottle and a curved top part is not exclusively dictated by its functional purpose ?, without verifying if each of these characteristics produces or contributes to a technical result.

l Exclusion of the criterion relating to the existence of other shapes allowing the same technical result to be obtained

l Cass. Com, 21 January 2004, no 02.12335 (Lexomil)

The Court of Cassation overturns the judgment of the Court of Appeal, which had relied on the existence on the market of other shapes of medicines of the same type to conclude that the oblong shape of the stick was not necessary, on the grounds that:

‘if the characteristic shape of the product is deemed to be a trade mark, those which are constituted exclusively by the necessary designation of the product or service cannot be regarded as such, the court of appeal, which did not examine whether the shape constituting the contested trade mark was attributable merely to the desired technical result, irrespective

of the existence of other shapes conducive to allowing this same result to be obtained, failed to provide any legal basis for its decision'.

l Cass. Com, 11 March 2008, no 06.11493 (S.A. Jouvin Frères v SA Lacroix Emballages)

The Court of Cassation states that ‘if the functional shape of the packaging of a product is devoid of distinctive character, it does not matter that other shapes can fulfil the same function ?.

Whilst the Court of Appeal had retained the distinctive character of this three-dimensional trade mark, the Court of Cassation overturns and annuls the judgment, stating that ‘while finding that this packaging allowed the ranges to be served directly on the board after removal of the film […] the court of appeal failed to draw the legal conclusions from its findings, which showed that the disputed sign had a shape attributable to the desired result'.

l TGI Paris, 6 December 2013, no 12/14164 (Gebr. Strab GMBH & Co. Kg v Metalfi) (upheld by CA Paris, 10 November 2015 no 14/09804 but the validity of the trade mark was not discussed because it was cancelled in the interim by the EUIPO)

The Court reiterates that ‘where all the essential characteristics of the registered shape address the technical function, the presence of one or more minor arbitrary elements which have no technical function is irrelevant.

Furthermore, since the shape of the product is exclusively necessary to obtain a technical result, the trade mark must be cancelled, irrespective of whether there are other shapes which allow the same technical result to be obtained.

The Court declares the three-dimensional trade mark invalid on the grounds that the sign is ‘constituted of elements which are clearly aimed exclusively at achieving a technical result'.

l TGI Paris, 10 April 2015, no 13/11016 (Carrefour Hypermarchés v Humeau Beaupreau)

The Court specifies that ‘the fact that the product can take on shapes other than that of the trade mark to achieve the same technical result does not mean that it escapes the prohibition, if the essential functional characteristics of that shape are attributable solely to the technical result'.

6. Will a 3D Shape be refused registration, or is a 3D Trademark liable to be declared invalid, if it consists exclusively of the shape, or another characteristic, which gives substantial value to the goods? If YES, please describe what test is applied.YesPlease describe what test is applied.

‘The distinctive character of a sign capable of constituting a trade mark is assessed having regard to the designated goods and services:

The following are devoid of distinctive character:

c) signs which consist exclusively of the shape imposed by the nature or function of the product or which confer on the latter its substantial value' (art. L.711-2c).

‘the application for registration shall be refused:

b) if the sign cannot constitute a trade mark by virtue of articles L.711-1 and L.711-2 or be adopted (art. L.712-7)

‘Registration of a trade mark which is not compliant with the provisions of articles L.711.1 to

L.711-4 shall be declared invalid by a court decision ? (art. L.714-3)

More specifically, the question is posed in terms ‘of the shape, or another characteristic', which refers to the text of the new 2015 Directive, which provides in article 4 (e) (iii) that signs which consist exclusively of the shape or another characteristic which gives a substantial value to the product will be refused registration or are liable to be declared invalid if they are registered.

In French law, article L.711-1 paragraph 2 of the IPC provides that shapes may constitute a trade or service mark, notably those of the product or its packaging or those which define a service.

However, article L.711-2 of the same code specifies, in sub-paragraph c), that signs which give the product its substantial value are devoid of distinctive character.

Perhaps this difference in wording will be removed when the 2015 Directive is incorporated into French law.

According to the European case-law, the reasoning behind the refusal to register signs which consist exclusively of shapes which give them a substantial value is to avoid conferring a monopoly on such shapes to perpetuate indefinitely another intellectual property right, namely design law (Judgment of 18 September 2014, C-205/13, Hauck). According to the examination guidelines of the EUIPO, the concept of ‘value ? must be interpreted not only in commercial (economic) terms but also in terms of ‘attractiveness', namely the probability that the products will be purchased primarily as a result of their specific shape or another specific characteristic.

The difference between the French and European texts does not preclude the French courts from applying European case-law.

The review is carried out in two steps. Thus, in a first step, it is necessary to determine the characteristics of the product whose shape is registered as a trade mark. In a second step, it is necessary to determine if these characteristics give the product a substantial value. Thus, a product may have several characteristics which give it a substantial value. This is the sense of the solution reached by the Tripp Trapp judgment (ECJ, 18 September 2014, C 205/13).

It should be noted that the European case-law has gone beyond the strict wording of the regulation of the Directive in taking the view that the substantial value may be found in characteristics other than the actual shape of the product which is the subject of the trade mark registration.

Thus, the examination guidelines state that where other characteristics are liable to give the product a substantial value in addition to this aesthetic value, such as a functional value (for example security, comfort and reliability), article 7, paragraph 1, sub-paragraph e), sub-paragraph iii) of the 2017 Regulation cannot be systematically excluded. Indeed, the concept of ‘value ? cannot be limited to the shape or to other characteristics of products which have only an artistic or ornamental value (Judgment of 18 September 2014, C-205/13, Hauck, EU:C:2014:2233, §29-32).

It should be noted that this solution has now been incorporated into the 2017 Regulation and the 2015 Directive.

There is not a great deal of French case-law on the question of substantial value.

In any event, it appears from the decisions made that French case-law reports a value or the value in the same way. However, to date the case-law focuses primarily on examining

whether this value results from the shape and only rarely focuses on ascertaining whether there are other characteristics.

French substantive law should evolve as a result of the new wording adopted by the 2015 Directive, which now provides that this value can result from the shape or another characteristic, thus incorporating the European case-law.

All the same, strictly speaking there is no ‘test' which could be made available from the French case-law. Nevertheless, certain criteria have been established as a result of the various decisions made. For this purpose, the courts ask themselves a number of questions in order to determine if the shape registered as a trade mark confers a substantial value to the product and, in contrast to the functionality criterion, do not focus on searching for linked to this substantial value.

These questions include the following:

l What characteristics does the consumer take into account when making his choice?l Would the consumer have chosen the product anyway, if it had had a different shape' (In this respect, see TGI Paris, 19 November 2015; no 14/10351, ‘Bic cristal ?; CA Bordeaux, 5 November 2015, no 14/00502 ‘Cosmétiques Bourgois'; CA Paris, 14 October 2016, no 15/18737 ‘Guerlain ?; CA Paris, 4 November 2016, no 14/09059 ‘Ferrero') l If the answer is ‘yes', then the shape has only a secondary role, and the traditional role of the trade mark is therefore protected.l If the answer is ‘no', then the shape plays a decisive role in the consumer’s purchasing behaviour. The sign will not be protected under trade mark law.

l What is the nature of the category of the goods in question? (In this respect, see CA Bordeaux, 5 November 2015, no 14/00502 ‘Cosmétiques Bourgois ?)l Is the shape unrelated to the nature/function/value of the product?l Is the artistic value of the shape at issue? (In this regard, see CA Bordeaux, 5 November 2015, no 14/00502 ‘Cosmétiques Bourgois')l Does this shape exhibit specificity in comparison with other shapes generally present on the market in question? (In this regard, see TGI Paris, 31 March 2016, no 15/03635 ‘Ice Watch'; CA Paris, 4 November 2016, no 14/09059 ‘Ferrero')l Is there a significant price difference in comparison with similar products? (In this regard, see TGI Paris, 19 November 2015; no 14/10351, ‘Bic cristal')l Has a promotional strategy focusing on the aesthetic characteristics of the product in question (In this regard, see TGI Paris, 31 March 2016, no 15/03635 ‘Ice Watch') been developed?

Although these criteria are largely applied by the national courts, there still appears to be a certain degree of uncertainty in terms of how they are assessed, to the extent that, at first instance, one court may declare a trade mark invalid having regard to its shape which would give it a substantial value, whilst another court will declare it invalid for lack of distinctiveness. In the latter case, indeed, the court will take the view that the sign is not capable of identifying an origin and has no inherent distinctiveness. The latter approach may be more favourable, because the trade mark can be ‘saved' if it can be shown that it has acquired distinctiveness through use.

Furthermore, the review of conditions carried out having regard to the use of the trade mark, among the characteristics other than shape, such as the promotional strategy of the applicant, which is operated by the European case-law to assess the validity of the trade mark, is debatable.

Indeed, the distinctiveness of a trade mark should be assessed, not in terms of the conditions under which it is used but at the time of the application alone.

Whilst this may be the position the French case-law has attempted to adopt to date, the Ice Watch and Bic Cristal decisions demonstrate that the French courts also tend to take into account these factors which are external to the applications and which are not therefore inherent in the shape itself.

In conclusion, the inclusion of the abovementioned criterion by the courts appears to show that there is in practice stricter scrutiny with regard to 3D trade marks, even if it is consistently reaffirmed that no distinction is made between different categories of trade marks to determine if a trade mark is capable of distinguishing the goods or services of one undertaking from those of other undertakings (Judgment of 5 March 2003, T-194/01, Soap device, EU:T:2003:53, §44) and that for signs representing the shape of the goods themselves the criteria applied are no stricter than those applied to other trade marks.

It is however acknowledged, both in Europe and in France, that it can prove to be more difficult to conclude that there is distinctiveness for this type of trade mark, because they will not necessarily be perceived by the relevant public in the same way as a word mark or figurative mark (Judgment of 7 October 2004, C-136/02P, Torches, EU:C:2004:592,§30).

Finally, it is impossible for this type of trade mark to acquire distinctiveness through use, when one considers that the shape registered gives the product a substantial value, whereas descriptive trade marks or marks which are inherently non-distinctive at the time of their application can acquire distinctiveness.

7. Is there any other ground of absolute refusal or invalidity specific to 3D Shapes or 3D Trademarks available under your Group's current law?No(Explanation is Optional)

- There are no grounds for refusal or invalidity specific to 3D shapes or 3D trade marks other than those already mentioned in questions 4, 5 and 6.

- However, 3D trade marks are very often declared invalid because of their inherent lack of distinctiveness under article L.711-1 of the IPC. Although this ground is not specific to 3D trade marks, it is however very often used autonomously in order to refuse registration of this type of trade mark.

- 3D trade marks can also be declared invalid on the ground that their graphic representation is not sufficiently clear (see in this regard CA Paris 24 November 2017 Capri Sun AG v ABE).

If you have answered NO to each of Questions 4, 5, 6 and 7 proceed to Question 10.

If you have answered YES to any one of Questions 4, 5, 6, or 7, please answer Questions 8 and 9 in relation to the relevant refusal / invalidity ground(s).

8. Do the refusal / invalidity grounds referred to in Questions 4, 5, 6 and/or 7, to the extent available in your Group's jurisdiction, operate independently from one another or may they also apply in combination? For example, do they apply if certain characteristics of the 3D Shape give substantial value to the goods and the others result from the nature of the goods?The provisions of the 2017 Regulation (Article 7(1)(e) of the 2017 Regulation: ‘The

following shall not be registered: (…) 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 ?; Article 59(1)(a) of the Regulation: ‘ An EU trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings: (a) where the EU trade mark has been registered contrary to the provisions of Article 7?), of the 2015 Directive approximating the legislation of the Member States on trade marks (Article 4(1)(e) of the 2015 Directive: ‘The following shall not be registered or, if registered, shall be liable to be declared invalid: (…) 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?) and of the IPC (Article L. 711-2 sub-para. 2 (c) of the IPC: ‘The following are devoid of distinctive character: (…) Signs which consist exclusively of the shape which results from the nature or function of the goods or which gives substantial value to the goods') require that the sign in question does not consist exclusively of the shape or another characteristic of the goods.

A sign consists exclusively of the shape, or another characteristic, of the goods where all its essential characteristics, namely its most important elements, (i) result from the nature of the goods themselves, (ii) are necessary to obtain a technical result or (iii) give substantial value to the goods (referring to EU trade marks: ECJ, C-48/09 P, Lego Juris v OHMI, 14 September 2010; 'EUIPO Guidelines relating to the examination of EU trade marks of 1 October 2017 (part B, Section 4, Chapter 6); referring to national trade marks: ECJ, C-299/99, Koninklijke Philips Electronics NV v Remington Consumer Products Ltd, 18 June 2002; C-205/13, Hauck v Stokke, 18 September 2014. The Court of Cassation applies the above principles established by the ECJ (Court of Cassation, Commercial Chamber, case no 05-16898, Koninklijke Philips Electronics NV v Remington, 30 May 2007).

The presence of one or more minor arbitrary elements is irrelevant in this respect.

These three grounds for refusal operate independently of one another (referring to EU trade marks: EUIPO Guidelines (part B, Section 4, Chapter 6); referring to national trade marks: ECJ, C-205/13, Hauck v Stokke, 18 September 2014). The essential characteristics of a sign may fall within the scope of either one or several grounds for refusal (for example, in relation to national trade marks: ECJ, C-215/14, Société des Produits Nestlé SA v Cadbury UK Ltd, 16 September 2015).

Consequently, once the essential characteristics of the sign have been identified, it is necessary to examine whether these fall within the scope of one or other of the grounds in question (for example, relating to national trade marks: ECJ, C-215/14, Société des Produits Nestlé SA v Cadbury UK Ltd, 16 September 2015):

l where none of the grounds for refusal/ invalidity applies in full to all the essential characteristics of the mark which have been identified, the mark can be validly registered (referring to EU trade marks: EUIPO Guidelines; referring to national trade marks: ECJ, C-205/13, Hauck v Stokke, 18 September 2014):l where at least one of the grounds for refusal/ invalidity applies in full to all the essential characteristics of the mark which have been identified, the mark cannot be validly registered:l thus, for example, a sign which has three essential characteristics will be refused registration if one of the three grounds identified above applies to the three essential characteristics of the mark which have been identified.l In other words, the grounds for refusal / invalidity are not interdependent. The sign will be refused registration / deemed invalid only if at least one of them applies in full to the essential characteristics of the sign.

9. Which, if any, of the refusal / invalidity grounds referred to in Questions 4, 5, 6 and 7, to the extent available in your Group's jurisdiction, can be overcome by acquired distinctiveness?The 2017 Regulation, the 2015 Directive and the IPC provide that none of the grounds for refusal or invalidity referred to in Questions 4, 5 and 6 can be overcome by proving that the shapes or other characteristics in question have acquired a distinctive character through use (Article 7(3) of the EUTMR: ‘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 59(2) of the EUTMR: ‘Where the EU trade mark has been registered in breach of the provisions of Article 7(1)(b), c) or d), it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered'; Article 4(4) of the EUTMD: ‘A trade mark shall not be refused registration in accordance with paragraph 1(b), c) or d) if, before the date of application for registration, following the use which has been made of it, it has acquired a distinctive character. A trade mark shall not be declared invalid for the same reasons if, before the date of application for a declaration of invalidity, following the use which has been made of it, it has acquired a distinctive character'; Article L. 711-2 sub-para. 3 of the IPC: ‘Distinctive character may be acquired through use, except in the case referred to in item (c)').

A trade mark which consists exclusively (as defined in Question 8) of (i) the shape which results from the nature of the goods themselves, (ii) the shape of goods which is necessary to obtain a technical result or (iii) the shape which gives substantial value to the goods cannot acquire distinctive character through use.

In other words, the principle of acquisition of distinctive character through use does not apply to these shapes or other characteristics, whether they are actually distinctive on the market or not (referring to EU trade marks: EUIPO Guidelines; referring to national trade marks: ECJ, 18 June 2002, C-299/99, Philips, 8 April 2003, C-53/01 to C-55/01; Linde AG, Winward Industries Inc. and Rado Uhren AG).

Conversely, a trade mark which does not exclusively consist of the shape, whether (i) resulting from the nature of the goods themselves, (ii) necessary to obtain a technical result or (iii) which gives substantial value to the goods, can acquire distinctive character through use.

II. Policy considerations and proposals for improvements of your current law10. Could any of the following aspects of your Group's current law be improved? If YES, please explain.

10.a. Registrability (or lack thereof) of 3D ShapesYesPlease Explain

It is desirable that the registrability of 3D Shapes as trade marks be improved.

Such an improvement would require revision of the approach of the inherent distinctiveness ‘test' for trade marks which consist of a 3D Shape, as suggested in paragraph b) below.

10.b. The test applied, if any, in relation to the registrability (based on inherent and/or acquired distinctiveness) referred to in Question 10(a)YesPlease Explain

In relation to the assessment of inherent distinctive character, it would be advantageous to change a number of areas.

It is noted that where the applicant is the applicant for registration, the onus is on that person to show that his trade mark differs significantly from the norms and customs of the sector. This poses a double difficulty in terms of effective administration of the evidence:

The applicant must adduce evidence of a negative fact, which is particularly difficult and perhaps illogical. In practice, the only way he can do this is to adduce positive evidence of a contrary fact.

Assuming he has to show what the shapes constituting the norm or customs of the sector may consist of, it will be in the applicant’s interest to present a, probably incomplete, picture of what the norm or customs of the sector might consist of, ignoring anything which could be to his disadvantage.

In practice, the examiners clearly feel that they are in an uncomfortable position, since they regularly cite examples of shapes in their objections (In one case, it is even reported that a rapporteur was called on, at the request of the Board of Appeal, to provide the claimant with a range of examples of models of shoes marketed in the European Union - EUIPO, Fourth Board of Appeal, 29 August 2016, case R 223/2016-4, §6). The provision of such items is often restricted to the results of a simple search on Google Image.

Another difficulty is associated with the fact that the evidential requirement that there should be no significant deviation from the norms or customs of the market is also an element which varies depending on the nature of the proceedings.

Thus, against holders of applications to register trade marks the ’EUIPO takes advantage of the low level of requirement afforded to it by the concept of fait notoire (known fact), invoking against applicants:

The fact that ‘it is settled case-law that, in the context of examining distinctive character, it is perfectly lawful to refer to the standard practice in a given sector without, however, providing specific examples of that practice' (GC, 10 November 2004, T-402/02, Bonbonverpackung, EU:T:2004 :330, §58).

In addition, it is equally settled that it is not necessary to adduce evidence of the usual character of the shape in business to establish the absence of distinctiveness of the trade mark applied for (GC, 13 July 2011, T-499/09, Purpur, EU:T:2011 :367, §30 ; EUIPO, 5 April 2017, decision to refuse European Union trade mark application no 016272361).

However, in proceedings for a declaration of invalidity, the applicant cannot simply claim that the trade mark which he is challenging deviates from the norms or customs of the sector without adducing convincing evidence to that effect.

For example, proceedings for a declaration of invalidity were dismissed on the grounds that the applicant did not adduce ‘solid proof' in the eight documents which he had exhibited in

order to claim that the shape of the contested trade mark was merely a variant of one of the basic shapes and was not significantly different from shapes present on the market (EUIPO, Second Board of Appeal, 22 September 2016, joined cases R 552/2016-2 and R 512/2016-2, Général Biscuit-Glico France v Griesson – de Beukalaer GmbH & Co. Kg, §43).

Possible suggestions for improvement relate to the following aspects:

l The principle that the public is not used to recognising the commercial origin of products from their shape is akin to a prejudice. It is no longer desirable to take assessment of the inherent distinctiveness of 3D Shapes as a starting point.l However, if we were to retain the Community approach, according to which the shape must deviate significantly from the norms or customs of the sector, then it is essential that particular attention is paid to establishing the boundaries of the norm or customs of the sector by defining the sector and the norm, so as to allow the parties to argue their case in relation to a specific frame of reference with which comparisons can then be made objectively in the context of adversarial proceedings. In this respect, the concept of known fact should be abandoned; if a fact is so evident, then it should not be very difficult to adduce evidence of it…l It would not be lawful to rely on the existence of a shape similar to that claimed as a trade mark to justify a lack of protection for the latter, if the shape available on the market is not actually available to the relevant public or if it is not available in a sufficiently meaningful way. In other words, it is necessary for consumers to have been presented with that shape in such a way that they remember it. This assumes, firstly, that the product presented in the shape in question has been effectively marketed to the relevant public and, secondly, that such marketing is sufficient to be well known to the public. A confidential or seasonal product should not have a significant impact. In particular, the concept of norm presupposes a use of identical or similar shapes of special importance.l Better administration of evidence should involve a reversal of the burden of proof where the proceedings relate to the validity of an application for registration, such that in all cases it is up to the Office refusing to register a trade mark which consists of a 3D Shape to adduce evidence of the fact that the shape is present and customary on the market. Thus, on examination of an application for registration, it would be more appropriate for the burden of proof of shapes which represent the norm or customs of the sector to be adduced in support of the statement of reasons for any decision to refuse registration. This means that an Office which refuses to register a 3D Shape as a trade mark would have to define in its statement of reasons what is meant by the norm or customs of the sector to which it seeks to refer. In other words, this concept cannot be based on ‘known facts', presumptions, prejudices or beliefs.

We do not feel it is helpful to contemplate specific criteria for acquisition of distinctiveness through use for three-dimensional trade marks.

10.c. The refusal / invalidity grounds, if any, referred to in Questions 4 to 7 (and potential combination thereof)YesPlease Explain

Current practice in the French courts, which is based on European case-law, would benefit from developing in a direction which is more favorable to the validity of three-dimensional trade marks.

Indeed, those very trade marks which are expressly referred to as signs which are capable of

constituting a trade mark, are actually more often than not either refused registration or cancelled, in particular because of the assertion by the ECJ that ‘the average consumer is not in the habit of making assumptions about the origin of goods on the basis of their shape or the shape of their packaging, in the absence of any graphic or textual element, and it could therefore prove more difficult to establish the distinctiveness of such a three-dimensional trade mark than that of a word mark or figurative mark ? which is considered dogma.

However, this assertion, which is now almost 15 years old, must be challenged. More specifically, the substantial value of a shape should be directly linked to the product and limited to that which constitutes the very essence of that product and is exclusive to it.

10.d. The possibility or lack thereof to overcome these refusal / invalidity grounds by acquired distinctiveness.YesPlease Explain

When the refusal to grant the trade mark registration or the ground for its cancellation results from its exclusively functional character, the possibility of overcoming that ground for refusal or cancellation by the acquisition of distinctiveness through use would have the effect of allowing patent owners to use the monopoly period from which they benefit to invoke acquired distinctiveness, whereas the public firstly recognises the technical result and that the association with the owner of the trade mark is merely the result of the monopoly conferred by the patent.

On expiry of the monopoly on the patent, they would then be able to continue indefinitely their monopolies under trade mark law, which would not be in the interest of competitors, free trade or the economics of time-limited rights or in the public interest.

Nonetheless, one cannot conclude from a figure derived from a patent that the shape cannot have a distinctive character and that it is purely functional. Indeed, it is necessary to put an end to the prejudice that the shape which constitutes the figure in a patent necessarily has a purely functional character.

The French Group considers that use of a three-dimensional trade mark should not allow the user to overcome the ground for refusal or invalidity of a sign which consists exclusively of the shape, or another characteristic, of the goods which is necessary to obtain a technical result.

The French Group supports the possibility of acquiring distinctiveness through use on other grounds for invalidity or cancellation of the trade mark (nature, substantial value).

11. Are there any other policy considerations and/or proposals for improvement to your Group's current law falling within the scope of this Study Question?No(Explanation is Optional)

III. Proposals for harmonisation

Please consult with relevant in-house / industry members of your Group in responding to Part III.

12. Does your Group consider that harmonisation in any or all areas described in the response to Question 10 or 11 above is desirable? Please answer YES or NO.

If YES, please respond to the following questions without regard to your Group's current law or practice.

Even if NO, please address the following questions to the extent your Group considers your Group's current law or practice could be improved. YesPlease Explain

13. Does your Group consider that 3D Shapes should be registrable as a trademark? Please answer YES or NO.YesPlease Explain

14. Should it be possible for a 3D Shape to be inherently distinctive? If YES, what test should be applied in order to establish if it is inherently distinctive?YesWhat test should be applied in order to establish if it is inherently distinctive?

The French Group suggests not establishing a specific ‘test' for determining if a 3D Shape is inherently distinctive. Assessment of the autonomous criterion of distinctiveness should not be carried out any differently from that applied to other types of trade mark.

Or alternatively (in line with the response to Q10b)

The French Group suggests:

l that the prejudice that the public is not in the habit of recognising the commercial origin of goods from their shape be abandoned;l that any potential approach based on assessment of the degree of deviation from the norms or customs of the sector entails placing special emphasis on defining the sector, the norm or customs of that sector to allow the parties to have a precise frame of reference with which comparisons can then be made objectively in the context of adversarial proceedings;l that reasons be given for the definition of the sector and the evidence of the content of the norms or customs of that sector and that these be supported by tangible evidence. Presumptions, probabilities, prejudices or beliefs cannot suffice for this purpose. Similarly, the concept of known fact cannot be successfully invoked;l that the evidence therefore relates to a sufficient presence in the sector of the envisaged shapes as constituting the norms or customs of the sector. Sufficient presence shall be interpreted as meaning a market presence which is sufficiently strong for the relevant public to remember it. A confidential or one-off product should not have a significant impact;l that where the proceedings relate to the examination of an application for registration of a trade mark, the burden of proving the above elements lies with the Authority which is refusing that registration. Proof of the above elements should be provided in support of the statement of reasons for any decision to refuse registration.

15. Should it be possible for a 3D Shape to acquire distinctiveness? If YES, what test

should be applied in order to establish if it has acquired distinctiveness?YesWhat test should be applied in order to establish if it has acquired distinctiveness?

The French Group suggests maintaining the principle of the test currently applied, as described in response to Question 3).

However, with regard to the exception provided for in the last sub-paragraph of Article L.711-2 of the IPC (i.e. distinctiveness may be acquired through use except where the sign consists exclusively of the shape which results from the nature or function of the goods or which gives substantial value to the latter), it would seem appropriate to question the reasons for maintaining it. It is justified in relation to shapes which result from the function of the goods, to the extent that it prevents the artificial recreation of a monopoly under patent law or design law after these rights have expired.

One might question the justification of the existence of this exception in relation to shapes which result from the nature of the goods or which give them their substantial value.

Various hypotheses can be considered:

l It is difficult to test signs which consist exclusively of the shape which results from the nature of the goods for inherent distinctiveness – indeed it is difficult to distinguish a sign which is inherently non-distinctive (notably because of its ordinary/ non-arbitrary shape, which results from the nature of the goods and does not differ sufficiently from the customs of the sector). Nevertheless, why is a sign which is not inherently distinctive able to acquire that distinctiveness through use (a word mark for example) when a sign refused registration because it consists of the shape which results from the nature of the goods is not able to acquire through use the distinctiveness which it lacks? This exception seems to create a notable disparity in the treatment of word marks and shape marks.l Signs which consist exclusively of the shape which gives substantial value to the goods can be analysed as those whose shape gives the sign a ‘high degree of distinctiveness ? (where aesthetics alone determine selection of the goods, the decision to purchase them). This makes it difficult to understand why this category of signs is unable to acquire distinctiveness through use.

In practice, some signs whose distinctiveness is rejected or disputed play a role in indicating origin through their intensive use. This should be reflected in the substantive law. Furthermore, it should be possible to assess the acquisition of this distinctiveness through use at the time of registration or after registration when the trade mark is the subject of invalidity proceedings. In the latter case, the documents to be considered should not only cover the period prior to application but also that after registration.

16. Should a 3D Shape be refused, or a 3D Trademark be liable to be declared invalid, if it consists exclusively of the shape, or another characteristic, which results from the nature of the goods themselves? If YES, please describe what test should be applied.YesPlease describe what test should be applied.

As mooted in response to Questions 4, 10 and 15, it is especially difficult to define precisely what is covered by the concept of shape which results from the nature of the goods:

l on the one hand, a shape which results from the nature of the goods is often linked to the essential characteristics inherent in the function of the said goods;l on the other hand, a shape which results from the nature of the goods may also be the cause of a lack of inherent distinctiveness (for example an ordinary shape which does not

differ sufficiently from the customs of the sector).

In practice, it is difficult to imagine that a shape which results from the nature of the goods may be considered inherently distinctive. Thus, in the case of signs which consist exclusively of the shape resulting from the nature of the goods, the test of inherent distinctiveness could well suffice to exclude them from protection. One might then reasonably question the advisability of maintaining the exclusion of signs which consist of this type of shape, as provided for in article L.711-2 c) of the IPC.

A major consequence of removing the distinctiveness exclusion from signs which consist exclusively of the shape which results from the nature of the goods would be that, if these signs are devoid of inherent distinctiveness (by virtue of the criterion of autonomous distinctiveness), they may still acquire distinctiveness through use (whereas if they are rejected for lack of distinctiveness on the basis of article L.711-2 c) of the IPC, they cannot benefit from the acquisition of distinctiveness through use).

Removal of the exclusion for this type of sign would therefore play a part in reducing the differences in the way word marks and shape marks are handled with respect to assessment of their distinctiveness (inherent and /or acquired through use)

To prevent three-dimensional trade marks from being unjustly rejected, the existing text should be applied more strictly, placing greater emphasis on the adverb ‘exclusively' which is currently included in the European and French texts. Thus, only trade marks which truly consist ‘exclusively' of the shape which results from the nature of the goods would be refused and not those for which the shape results particularly or partially from the nature of the goods, as may currently be the case. This approach would be more in keeping with the spirit of the current texts.

Suggestions in response to Questions 15) and 16)

The French Group suggests removing the ground for refusal applicable to signs which consist exclusively of the shape which results from the nature of the goods;

At the very least, the French Group suggests allowing signs which consist exclusively of the shape which results from the nature of the goods, or which give substantial value to them, to acquire through use the distinctiveness which they lack.

17. Should a 3D Shape be refused, or a 3D Trademark be liable to be declared invalid, if it consists exclusively of the shape, or another characteristic, of goods which is necessary to obtain a technical result? If YES, please describe what test should be applied.YesPlease describe what test should be applied.

The French Group considers that a three-dimensional trade mark which consists exclusively of the shape, or another characteristic, of the goods which is necessary to obtain a technical result should be refused or cancelled unless one or more non-functional elements, such as an ornamental or fanciful element, plays a key role.

The test to be applied should include the following assessment criteria:

l protection of the public interest;l identification and analysis of the essential characteristics;l determination of the need to obtain a technical result because of the functional and essential

characteristics of the shape or another characteristic;l the presence or absence of non-functional elements and whether these have a prominent role or not;l this assessment should be carried out in concreto depending on the sign and the goods referred to, without extrapolating to other goods or to potential developments.

The French Group considers that the existence of other shapes or other characteristics which enable the same technical result to be obtained could be an indication that the shape or characteristic in question is not exclusively necessary to obtain a technical result.

18. Should a 3D Shape be refused, or a 3D Trademark be liable to be declared invalid, if it consists exclusively of the shape, or another characteristic, which gives substantial value to the goods? If YES, please describe what test should be applied.YesPlease describe what test should be applied.

The French Group supports the retention of the refusal to register a sign, or the declaration of invalidity of a three-dimensional trade mark, which consists exclusively in the shape which gives substantial value to the goods. Such an exclusion is indeed consistent with the purpose of the rule, which is not to protect under trade mark law a shape which should be protected under other laws.

This is somewhat more difficult to answer in relation to other characteristics, which should first be defined, without causing significant legal uncertainty.

The criteria (or tests) which should prevail should be those of the guarantee of origin and use as a trade mark. If the sign is an indicator of origin and is used, or may be used, as a trade mark in that case, nothing should prevent it from being registered as a trade mark.

Thus, a development in the case-law which rejects 3D trade marks on the ground that they do not differ significantly from the norms of the sector is desirable, without asking whether the said shape is an indicator of origin.

19. Should there be any other absolute refusal or invalidity ground specific to 3D Shapes or 3D Trademarks? If YES, please explain briefly.No(Explanation is Optional)

No, other grounds for refusal specific to 3D shapes or 3D trade marks do not appear to be necessary.

If you have answered NO to each of Questions 16, 17, 18 and 19, please skip Questions 20 and 21 and proceed to Question 22.

If you have answered YES to any one of Questions 16, 17, 18 or 19, please answer Questions 20 and 21 in relation to the relevant refusal / invalidity ground(s).

20. Should the refusal / invalidity grounds referred to in Questions 16, 17, 18 and/or 19 operate independently from one another or should it also be possible to apply them in

combination? For example, should they also apply if certain characteristics of the 3D Shape give substantial value to the goods and the others result from the nature of the goods?In principle, a sign should be assessed comprehensively so it is not possible to carry out a piecemeal analysis. Thus, even though a complex sign may be composed of various elements which are not distinctive, the combination of those elements may generate a distinctive sign. There are numerous examples for trade marks which are not three-dimensional.

Consequently, and on the assumption that three-dimensional trade marks are subject to the same rules governing validity and assessment as other trade marks, there is no reason to proceed differently.

Thus,

l either the sum of the elements constitutes a combination which is distinctive per se, even though each of its elements taken independently could be refused registration, in which case the shape must be registered,l or the shape considered as a whole is caught by a prohibition relating to the substantive shape, the nature of the goods or any other ground such as the functionality, in which case it cannot be registered as a trade mark.

21. Which, if any, of the refusal / invalidity grounds referred to in Questions 16, 17, 18 and 19 should (and thus may) be overcome by acquired distinctiveness?Acquisition of distinctiveness through use should be possible, excluding trade marks which consist exclusively of shapes allowing a technical result to be obtained.

22. Please comment on any additional issues concerning the registrability of 3D Trademarks and the refusal / invalidity grounds mentioned above that are within the scope of this Study Question (as described in paragraphs 11 to 13 of the Study Guidelines), and that you consider relevant to this Study Question

23. Please indicate which industry sector views are included in your Group's answers to Part III.