In assessing whether a sign consists exclusively of the shape of goods which is necessary to obtain a technical result, other factors such as the perception of the relevant public can also be taken into account
20-08-2020 Print this page
Trade mark law - In order to establish whether a sign consists exclusively of the shape of goods which is necessary to obtain a technical result, assessment does not have to be limited to the graphic representation of that sign: other relevant factors such as the perception of the relevant public can also be taken into account in order to identify the essential characteristics of the sign at issue, other data that does not come from the graphic representation of the sign can only be used in the assessment when this data is derived from objective and trustworthy sources and not just from the perception that the relevant public has of the sign. Article 3(1)(e)(iii) of Directive 2008/95 must be interpreted as meaning that the ground for refusal of registration provided for in that provision must not be applied systematically to a sign which consists exclusively of the shape of the goods where that sign enjoys protection under the law relating to designs or where the sign consists exclusively of the shape of a decorative item: the ground for refusal or invalidity provided for in Article 3(1)(e)(iii) of Directive 2008/95 can be applied if it is only on the basis of the relevant public's knowledge that it can be established that the shape gives the goods substantial value. In the present case, that knowledge relates to the fact that the product depicted in the sign at issue has become the tangible symbol of mathematical discovery which addresses questions raised in the history of science. Article 3(1)(e)(iii) of Directive 2008/95 must be interpreted as meaning that the ground for refusal of registration provided for in that provision must not be applied systematically to a sign which consists exclusively of the shape of the product where that sign enjoyw protection under the law relating to designs: the fact that the appearance of a sign is protected as a design does not mean that trademark protection is excluded. The same goes for the instance that the sign consists exclusively of the shape of a decorative item: it is in no way inconceivable that the substantial value of this type of item may result from factors other than its shape, such as, inter alia, the story of its creation, its method of production, whether industrial of artisanal, the materials that it contains which may be rare or precious, or even the identity of its designer.
