Article 7(1)(e)(iii) EUTMR (Regulation 207/2009 as amended by Regulation 2015/2424) is not applicable to trade marks registered before the entry into force of the amendment to that Regulation (23 March 2016). Sign consisting of two-dimensional decorative motiffs affixed to goods such as fabrics or paper shall does not "consisting exclusively of the shape " within the meaning of Article 7(1)(e)(iii) CTMR (Regulation 207/2009 prior to its amendment by Regulation 2015/2524). Although, in the main proceedings, the sign under consideration represents shapes which are formed by the external outline of drawings representing, in a stylised manner, parts of geographical maps, the fact remains that, apart from those shapes, that sign contains decorative elements which are situated both inside and outside those outlines.
In the present case, the referring court asks whether a sign consisting of the two-dimensional representation of a two-dimensional product such as a fabric can be considered to be a shape within the meaning of Article 7(1)(e)(iii) of Regulation 207/2009 (when it was still called the Community Trade Mark Regulation). The trade mark concerned is shown below. As this is a large image, the image has been reduced in size. The image is clickable, so you can also see it in full size. It is also asked whether the amendment of this article by amending Regulation 2015/2424, which amended the article so that not only the signs consisting exclusively of "the shape which" but also those consisting of "another characteristic which" give a substantial value to the goods, has an impact on the assessment to be made in relation to this ground for invalidity. Note: this case concerns an assessment of Regulation 207/2009 and not of the current Union Trade Mark Regulation 2017/1001.
The Court rules on the preliminary questions as follows:
1. Article 7(1)(e)(iii) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark, as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015, must be interpreted as meaning that it is not applicable to marks registered before the entry into force of Regulation No 207/2009, as amended by Regulation 2015/2424.
2. Article 7(1)(e)(iii) of Regulation No 207/2009 must be interpreted as meaning that a sign such as that at issue in the main proceedings, consisting of two-dimensional decorative motifs, which are affixed to goods, such as fabric or paper, does not ‘consist exclusively of the shape’, within the meaning of that provision.