INTA Bulletin

March 1, 2012 Vol. 67 No. 5 Back to Bulletin Main Page

EUROPEAN UNION: “Shape & Device Marks” and “Would-Be 3D Marks”

In its decision of December 7, 2011 (Case R 892/2011-2), the Second Board of Appeal of OHIM held that the shape of a container can qualify for protection as a three-dimensional trademark if the distinctive character originates not from the shape of the container itself but from a logo appearing on its side.

In this case, the subject of the registration sought by Deutsche See gmbh was a container for food, as shown right. The registration designated, inter alia, “crates and bins of metal / not of metal, namely fish boxes; fresh, chilled, frozen, fried, smoked and canned fish and fish products.”

The examiner at OHIM objected to the protection of the trademark in the EU on the ground of lack of distinctiveness.

After initially arguing that the shape of the container itself was distinctive, the applicant realized and pointed out that when the container was seen in high resolution, a fishlike logo could be seen on the right-hand side. The logo appeared as shown below.

The examiner was unconvinced. The Board of Appeal, however, took another view, as, apart from the purported fancifulness of the three-dimensional design of the crate itself, the applied-for mark bore the distinctive fishlike logo on its side. It noted that because of technical factors that inevitably limited the size and resolution of the trademark when the application was electronically filed at the Office, the logo was not particularly evident and could easily pass unnoticed by the casual observer. Nevertheless, the logo was visible in the top right-hand representation of the mark as filed and would be highly noticeable in a life-size reproduction. The Board of Appeal found the logo to be neither a realistic depiction nor a typical representation of a fish but a highly fanciful design, being both “fish” and “wave,” a design that combined two concepts in a simple but striking form. For the Board, it followed that, on the basis of this device alone, the mark could be granted protection in the EU, even though it was embedded in a three-dimensional form that, viewed as a whole, might be devoid of any distinctive character for such containers. The fish device enabled the mark as a whole to function as a badge of origin.

In the Board’s decision, the 3D mark was protected on the basis of a component that was not three-dimensional because the pictorial element enabled the mark as a whole—not just the pictorial element—to function as a trademark. This created what could be described as a “shape and device” mark, comparable to a “word and device” mark. Similar to word-device combinations with nondistinctive word elements, this type of mark cannot be the subject of rights that derive from the shape of the container itself, as the scope of protection is restricted to the distinctive device element. Nevertheless, in the trademark register it will be indicated as a three-dimensional mark, not as a figurative mark.

For trademark practitioners this decision shows once more that it is important to review three-dimensional trademarks carefully and in detail to find out whether protection may derive from a two-dimensional component shown on the three-dimensional form. While “would-be three-dimensional marks” protected only because of a two-dimensional component are known from the practice of national trademark offices, it must be kept in mind that this basis for protection also applies in cases where the distinctive two-dimensional component is hardly visible, so that misinterpretations are likely to happen.

For trademark applicants this decision may be helpful, but it touches a borderline: the Court of Justice of the European Union may still find that such marks fall afoul of the requirement of a clear and easily accessible graphic representation according to the requirements set forth in the Court’s judgment in Sieckmann (Case C-273/00 (ECJ Dec. 12, 2002)) if only the life-size reproduction of the goods whose shape is represented in the mark allows one to discern the only distinctive component.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers
are urged to check independently on matters of specific concern or interest.

© 2012 International Trademark Association