14

Protection of Shapes as Trademarks
Sigrid Asschenfeldt(*)

The registration of “shapes of goods and packaging” in the list of signs capable to become trademarks, so
called “three-dimensional marks,” had the potential to change the traditional perception of trademarks as names
or logos. 6 years after the amendment of the Trademark Law in Japan and 12 years after the first European
Trademark Harmonization Directive lead to amendments of the Trademark Laws in most European countries,
followed by the introduction of the European Community Trademark System in 1995, the article sets out tocompare the practice concerning marks comprised of the configuration of goods or packaging. It discusses
problems resulting from the dual nature of shapes, which can embody functional features or aesthetic
embellishments and identify a products’ origin at the same time. It juxtaposes the Japanese Patent Office’ spractice regarding the prerequisites for registration and the approach of the European Community Courts andthe Office for Harmonisation in the Internal Market (OHIM). Emphasis lies on the tests for inherent
distinctiveness and non-functionality, the latter illustrated by the differing approaches of the European Court ofJustice and the German Federal Supreme Court. While the system is still in the process of being carved out, it
can be said that European practice takes a generous view toward the registration of (parts of) productconfigurations and packaging, in particular the shape of bottles.

Ⅰ Introduction

1

While countries like the U.S., and the Benelux
countries have a long history of trademark
protection for three-dimensional shapes, Japan
amended its Trademark Law (herinafter TML) in
1996 to include shapes of goods and packaging into
the definition of what can consitute a mark. It
followed suite to the European Union, which issued
its “First Directive 89/104/ECC of the Council to
Approximate the Laws of the Member States
Relating to Trademarks” (hereinafter the
Trademark Directive/ TMD) on December 21st
1988, thereby prompting France, the United
Kingdom and Germany to revise their trademark
laws accordingly.
The TRIPs Agreement does not mention
three-dimensional trademarks expressly, but it
stipulates in Art. 15 that protection for marks thatare “visually perceptible” and “distinctive” is to beprovided through registration. Its Art. 25 (1)foresees that “members shall provide for theprotection of independently created industrial
designs that are new and original”. They may
determine that protection should not extend to“technical or functional considerations”.
In the Madrid Agreement Concerning theInternational
ProtectionofTrademarks“three-dimensional shapes” are listed under theheading of what can constitute a mark and theRegulations [Art. 8 (2) (ix)] and Rules [9 (4) (viii)]
to the Protocol Relating to the Madrid Agreement
mention three-dimensional marks as well.

The term “three-dimensional shape” is verybroad. One can distinguish the following types ofmarks potentially eligible for protection:
Three-dimensional
objectswhich
arephysically or conceptually independent of andwhose shape does not relate to the goods
themselves, such as signboards, charactersused in advertising, or features of buildings, afrequently cited example is Colonel Sanders of
Kentucky Fried Chicken,
Shapes of packaging, not determined by theshape of the goods themselves e.g. containers
for liquids or other goods which are
dimensionally unstable, the example mostfrequently cited (outside of Japan, however) is
the “Coca-Cola Classic” bottle;
Shapes of goods;
Shapes of parts of goods or packaging, such as
clips of fountain pens or caps of bottles;
Shapes of articles used in the provision ofservices, such as shapes of cutlery inrestaurants or the attire of personnel;
Combinations of one of the above shapes withwords, colours or graphical elements (“tradedress” or “get-up”).
A subcategory under this item are marks
related to shapes of goods, which, derive theireffect from a figurative element rather than fromtheir shape. Although they may be part of the goods,
physically or conceptionally, the mark could exist
idependantly from the product. In Germany, theTypes of Three-dimensional Marks(*) Ph.D. candidate, Max-Planck Institute for Intellectual Property, Competition and Tax Law, München, and the
FernUniversität Hagen; Attorney at Law, Germany, sigrid@asschenfeldt.de

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● 102 ●

term “position mark”(“Positionsmarke”) has been
forged to distinguish this type of mark. Such marks
consist of a two- or three-dimensional element
applied to a product in a defined position and size in
relation to the product, whose shape or style are
not claimed under the trademark right. Examples
are selvedges sewn into fabrics, an exclamation
mark in colour on the back pocket of jeans, signs
sewn on sport shoes or colour marks on the solesof shoes, such as Community Trademark No.
1027747 by Prada “red stripe placed longitudinallyon the rear end of footwear ” , or the mark ofGermany’ s Lloyd’s Shoes – a red stripe at the soleof the heel.
Naturally, raised structures or relief-like-forms,
are also three-dimensional, but the visual
perception of the shape is not prevalent, so thatthey rather appeal to the haptic sense and thus
qualify as “tangible marks.” Different criteria shallapply to such marks, therefore it would lead too far
to discuss them in this article. Since plastic
renderings of logos or script are also objectively
three-dimensional, but have the same effect as
traditional word or device marks, the criteria forprotection will be the same. Therefore, they are notcovered in the article either.
2

The U.S. Supreme Court and ProductConfiguration Protection

In the U.S., shapes of goods could be protectedunder section 43 (a) of the Lanham Act. Thissection covers a product’ s unregistered symbols,
otherwise known as its “trade dress”. Trade dress
refers to “the total visual image of a product and theoverall impression it creates”. It can compriseproduct packaging as well as product configuration.
The line between packaging and productappearance features is not easily drawn, f.e. while abottle is a product, when seen as a container, it
could also be construed as packaging for perfume orother liquids. Underlying the protection is thestated theory that configurations of certain products
can identify the source of the products themselves.
The problem is the dual role of product design– as a feature of the product’ s aesthetic appearance
or technical function – or as a mark of the
manufacturer. U.S. courts and legal doctrine
struggled with the technical and aesthetic
functionality of product designs, and the central
problem whether a product itself could serve as atrademark for a long time. Eventually, the paradigmof design protection came to a substantial shift incases involving patches for professional sports
teams. The patches, which depicted the teams’signs, were sold by themselves, not as labels in or
attached to sports apparel or other goods, but as
decorative appliqués for clothing and other use. As
it was deemed to be unfair to allow parties otherthan the sports teams themselves to profit from the

popularity of and the goodwill in the team’s
trademarks, protection for trademarks as products
came to be an issue. Eventually, it was concluded
that, “if trademarks could be products, products
might just as easily be trademarks.”
The U.S. Court of Appeals for the Third
Circuit set out the following requirements forinherent distinctiveness of “product configuration
trade dress” in its 1994 Duraco-case. It ruled that
trade dress embodied in the shape of a product had
to meet three requirements. It had to be unusualand memorable, conceptually separable from theproduct and likely to serve primarily as an indicatorof the product’ s origin.
In 2000, these findings seemed to be upturnedfor “ product design ” features in the Supreme
Courts’ “Wal-Mart” Decision. It was argued, that
consumers would not recognize a trademark effectin product shapes, thus “product design features”
had to acquire secondary meaning to qualify for
trademark protection, while “product packaging”
features would be assessed under the same
standards as wordmarks, thus having the capacity
to be inherently distinctive. The decision did notsolve the question of inherent distinctiveness. In a
third decision, the Supreme Court then hinted, that
“ Wal-Mart ” should be interpreted narrowly oreven be reduced to its facts. In “TrafFix”, theshape of a signstand was under dispute, after patent
protection had expired. Instead of drawing a clear
line between patent- and trademark protection, theCourt applied the functionality test, endorsing two
functionality standards. The first comprised that adesign feature is functional, if it is essential to theuse or purpose of the article or if it affects the costsof the article. The second is that a feature isfunctional, if exclusive use of the feature would put
competitors at a significant, non-reputation-related
disadvantage. The Court ruled that trademark law
should not extend to patented subject matter or
non-patented primarily functional features. But it’s
test leaves room for the protection of appearance
variations that are not related to significant
functional operation and are not competitively
significant appearance features under the doctrineof aesthetic functionality.
3

Protecting Shapes as Trademarks ?

The problem of three-dimensional trademarks
is evident in marks cinsisting in the shape of goods.
Identity of the product, for which the mark is a“name,” and the mark itself, seems to overturn abasic principle of the trademark system. It seems to
disrupt the concept of intellectual property rights,
which aim at the protection of technical inventions
or artistic achievements. The limited term ofprotection for these monopoly rights is based on
the public policy decision that society benefits froma “freedom to copy”, which allows competitors to● 103 ●IIP Bulletin 2003

use and further develop an invention, or artists tocreate a style of fashion by profiting from priorcreations, both contributing to the society. The“freedom to copy” should only be limited, whereother aspects, beneficial to society as whole, are atstake. The interests of inventors and artists to be
rewarded and to recover the costs invested in theirinvention, have to be weighed against the society’ sinterests in a free disposition of knowledge kept in
the public domain. As far as trademarks areconcerned, the interests of prospective trademark
owners in defending their indication of origin,consumers’ interests in guaranteed quality, productidentification and recognition, as well as market
transparency, have to be balanced with the interestsof competitors and public policy considerations.
Shapes consisting of configurations of goods orpackaging will need to fulfil the high standards ofeither novelty and an inventive step to be eligible
for patent protection, or have to qualify as a “workof art”, if they should come to be protected undercopyright law. Copyright protection for usefularticles, e.g. “works of applied art,” is usuallylimited. Two approaches are possible, the first is
to let protection extend only to individual works ofart, excluding objects of mass production. The
other approach is to define a higher threshold ofcreativity to exclude very simple creations. The
protective right most likely to overlap with objects
eligible as three-dimensional trademarks is the
Design Right, as it protects aesthetic creations
which appeal to the visual sense.
It has been found that shapes can convey
trademark-messages to consumers. The problem isthe multitude of signals which may be conveyed by
the appearance of a product. The shape may serve
as a sign, but it depends on the definition of the signand on the perception of the recipient of themessage, how the sign is read. A single mark may
convey more than one message to more than one
audience.
The controversial issue is, whether certain
shapes should be excluded from protection in
general on public policy grounds, irrespective
whether such shapes function as signals ofrecognition and indicators of origin in the market
place. The reasons for refusal of protection aim to
exclude situations where the signal emitted by theshape conveys another than a trademark message.
Naturally, a mark, which does not fall under thosereasons for refusal must still play a role as a sign inthe market place and avoid inappropriate effects,
such as offending or misleading the public.
Usually, a product will carry more than one
sign. The signs tend to interact with each other. As
a result, the message conveyed by a distinctive
shape may be obstructed by word or device marks
used in connection to it.
Ever since the eary days of Television
advertising, advertising characters, animated

IIP Bulletin 2003

embodiments of products and so on have been used
to advertise products. In mature markets,
quality-competition
has
given
way
to
image-advertising. People tend to buy a productless for considerations of its useful function, but fora social message, such as belonging to a certain
group, leading an enviable lifestyle or anotheraspect of a “product world.”
The first part of this article will give a shortsummary of the basic principles regarding trade
mark protection for shapes of goods in Japan injuxtaposition to the European approach described in
the second part. The third part sets out to look at
the practical implications of the different
approaches.

Ⅱ The Present situation in Japan
1

Background

The reasons for the amendment to theJapanese
Law
(TML)
in
respectofthree-dimensional marks were many fold. Firstly,
there were two-dimensional marks registered,
which seemed to be intended for three-dimensional
shapes, such as clips of fountain pens; secondly,
there were cases in which marks could not be
separated from a three-dimensional shape. A third
reason was market-development, which employed
new types of advertising and changing
circumstances of sale. The developments in theEuropean Union were also closely watched. Also,it was feared that cases might occur, where therejection of a three-dimensional, distinctive markmight not be in compliance with Art. 6 quinquies B(telle quelle marque). A last and probably decisive
reason was Japan’s accession to the Protocol
Relating to the Madrid Agreement from March
2000.
In Japan, trademarks were defined as “symbols
placed on goods which directly or conceptually
express the origin of the goods.” This definition has
broadened over the years, first to cover service
marks and since the amendment in 1996 to include
trade dress and three-dimensional objects. In thepresent Trademark Law (Art. 2 (1)), “marks” aredefined as “ characters, figures, symbols, or
three-dimensional shapes or any combination
thereof, or any combination thereof with colours.”“Marks” must be visually perceptible to beregistrable in Japan. The term “sign,” incomparison, has a broader meaning not necessarily
limited to visual perception. Sounds, scents, tastes
or haptic perception can also function as signs, butnot (yet ?) as marks.
The definition of trademarks is closely
connected to the way in which the mark is used,
therefore, the definition of trademarks in Art. 2 (3)and (4) TML, which specified the “use” of the mark,had to be rephrased to include “acts of having● 104 ●

goods or their packaging, or articles that aresupplied for use in the provision of services, andadvertisements relating to goods or services shaped
into a mark.”
The amendment of the Trademark Law has
prompted much criticism. It was feared that there
would be numerous claims to monopoly-likeexclusive rights over common items that society
might need to prosper and that the balance of thesystem of intellectual property rights would be
upset. Another point of concern was that trademark
protection for shapes would lead to a diminishing
demand for design registrations and eventually toan “erosion” of the Design Law.
2

Requirements for Protection

2.1 No Inherent Distinctiveness
These concerns are taken into account in theregistrability requirements. The assessment
centers around the question whether athree-dimensional shape can serve to distinguishgoods of one enterprise from those of otherenterprises (Art. 3 (1) (iii) TML), and whether themark applied for is suited to be monopolised. These
provisions apply to two- and three-dimensionalmarks alike. Registrations of “trademarks, which
consist solely of a mark indicating in a common way… the shape (including the packaging shape) … of
the goods; …or the provision of services … orarticles for use in such provision” are to be refused.
Shapes, which embody the form of the designatedgoods or otherwise describe the goods or servicesof the application or the shape of objects used inprovision of the designated services, are likewise
excluded. It is interpreted in a broad sense,
resulting in an exclusion of whole categories ofmarks. Unless shapes of goods or packaging are
combined with a distinctive word element, they are
excluded under the guidelines set out in theTrademark Examination Manual of the JPO.
Marks “consisting exclusively in the shape of
goods ” are generally held to be perceived byconsumers to be merely “within the scope of the
shape of the designated goods (including the shapeof their packaging), or the shape of an article usedin provision of the designated services” or to becomposed exclusively of “the common shape of abuilding, where the designated services concern
immovables, f.e. services in the building- orconstruction industry,”
This interpretation extends to shapes of
products, which are substantiually different fromthe usual shapes of the kind of goods found on themarket and products, which embody decorative
elements, as well as products which are new andunusual or characteristic in appearance. Suchshapes will be held to be within the range of shapes
which might be adopted by competitors in the
future. This evaluation was confirmed by the Tokyo

High Court in its Decision of July 17, 2001 (Yakult),
where it stated that “ the shape in question,although unique and characteristic in appearance,
will not necessarily serve to differentiate theproduct from products of other manufacturers. ”
Assessment will be made on the basis of, inter alia,
the present situation in the market in therespective field and the relevant segments ofconsumers. There seems to be hardly any room forthe examiners’ discretion, however, when it comesto the assesments of marks consisting exclusivelyof shapes of goods.
Containers or packaging for liquids or otherdimensionally unstable goods, though notconnected to “the usual shape of the goods”, will
be rejected as lacking distinctiveness “as long as
the composition of the three-dimensional
trademark as a whole is perceived as representing
the shape of the receptacle that contains the
goods. ” This seems to apply to all kinds ofcontainers. Examples cited in the Manual arebottles for western alcoholic beverages, parfums or
sweets, as it is assumed that there exists a“general practice” of decorating these articles in a
fashionable manner, which makes consumers not toperceive a trademark. Consequently, shapes of
packaging, in particular bottles or containers, can
not be protected as trademarks at the time ofmarket entry, although their unique appearance
might appeal to consumers and influence theirdecision to buy.
Three-dimensional marks which are notconnected to the goods themselves, such as
characters used in advertising, can be foundinherently distinctive. The same accounts forthree-dimensional shapes which comprise adistinctive word element or logo.
Another requirement for registration is that of“Use” as defined in Art. 2 (3) TML. There isnothing in the provision to show that “use” of ashape alone can constitute a mark. Characters or
figures will not be found to constitute a trademark
when used in a purely decorative manner or in a
way that the public does not perceive as“trademark use”, f.e. on the bottom of a bottle or asa pattern which covers the whole surface of athree-dimensional shape.
Art. 3 (1)(v) TML bars registration of signs,
which “consist solely of a very simple andcommonplace mark, ” f.e. spheres, cubicles,
cylinders or three-dimensional renderings of single
letters or numbers.
2.2 Acquired Distinctiveness through UseMarks, which were denied registration under
Art. 3 (1) (iii) or (v) of the TML at first, may
nonetheless be registrable, if they have acquired
distinctiveness through use at a later date, if“consumers are able to recognize the goods orservices as being connected to a certain person’sbusiness”. The burden of proof lies with the● 105 ●IIP Bulletin 2003

applicant. He has to establish that the mark has
acquired distinctiveness through long years of use
or very aggressive advertising. Advertisements,
statements of sales turnovers, number of items
sold, investments in advertising, endorsementsfrom rival companies, industry associations or
consumer surveys are permitted as evidence. The
evidence must show that the shape alone serves as
an indicator of origin, not the wordmark used inconnection with it.
The Tokyo High Courts’ decision of July 16,
1998 (Tamagotchi) further indicates, that examples
of infringement cases involving imitations of the
product, in which the courts applied Art. 2(1)(i) or(ii) of the Unfair Competition Prevention Law, arebeneficial to support a claim for acquired
distinctiveness.
These requirements are strictly applied by the
courts. So far, only two or three marks have beenregistered under the provision of Art. 2 (3) TML, allinternational applications designating Japan under
the Madrid Protocol. It will be interesting toobserve, whether “gaiatsu” by these means will
work in favour of Japanese applicants in the future.
2.3 Specific Obstacles for Marks Consistingof Shapes of Products or Packaging
Art. 4 (1) (viii) TML sets out a special obstacle
for “ trademarks which consist solely of athree-dimensional shape of goods or theirpackaging” by excluding shapes which are
indispensable to secure the functions of the goods
or their packaging from registration. Marks refused
under this heading will not be registrable even if
they come to be recognized as indications of one
enterprise by consumers later on (Art. 3 (2) TML).
This provision aims to preclude monopolies ininevitably functional product features as a policy toprevent restrictions in competition. The term
“inevitable” is interpreted to suggest an extremely
narrow interpretation of this provision. If thetechnical function of the product can be achieved byuse of alternative configurations in an equallycompetitive way, especially in view of the costs ofproduction, it shall not apply. If, contrary to thisprovision, an “indispensable shape” came to beregistered as part of a trademark, it would not becovered by the trademark right (Art. 26 (1) (v)TML).

in question. The only conceivable peculiarity inthree-dimensional marks is their varying
appearance when seen from different points of view.
The Tokyo High Court ruled in its decision ofJanuary 31, 2001 (Takoyaki), that it is sufficient if athree-dimensional trademark is similar to a device
mark if seen from the side, which has the strongest
appeal to consumers.
In cases of combined three-dimensional marks,
which consist of a combination of a shape with wordelements, it is assumed that consumers will usually
respond to the written indication, as thoseelements are easier to understand and to reproduce
than non-verbal elements. This means that inshapes registered in connection with a word mark,the word element will be considered to be
distinctive. Consequently, the value of such marks
for the protection of three-dimensional shapes ismore than questionable. The word element will
most likely be considered to dominate the overall
impression of the mark, whereas a shape, which is
not considered to be distinctive, will not be coveredby the scope of protection. Consequently,
trademark protection will not extend to cases
where the infringer uses a shape in combination
with another wordmark under Art. 26 (1) TML.
4

Art. 29 TML stipulates that the owner of a
trademark, or other persons entitled to its use,shall not use the mark in any manner as to give rise
to a conflict with another person’s patent-, utility
model-, design- or copyright of earlier priority.
Conflicts between a patent right of earlier
priority and a three-dimensional trademark after
expiration of the term of the patent shall be solved
under Art. 33 (2) TML. If the three-dimensional
mark will outlast the term of patent protection, theformer patentee shall have the right to continue its
use of the invention within the scope of the original
patent right (Art. 33 (1) TML), and use of theregistered trademark must not intentionally violate
the rules of fair competition.

Ⅲ Present Situation in Europ
1

3

Test for Similarity of Three-dimensional
Trademarks

In assessing the similarity of threedimensional marks, the same criteria are applied asin the case of word marks: The appearance and theconcept of the marks as perceived by the relevant
class of consumers of the designated goods will beconsidered, given the circumstances of sale, themarket-situation and the consumers’ apprehended
attention to detail, when buying the sort of products

IIP Bulletin 2003

Conflicts with other Intellectual Property
RightsThe European Trademark System

In the European Union, the national
Trademark Laws of the Member States have been
harmonized through the Trademark Directive(TMD) and co-exist with the Community
Trademark System in their respective territories,
which was launched by Council Regulation No.
40/1904 of December 20, 1993, on the Community
Trademark (CTMR). The trademark authority for
the EU is the Office for Harmonization in theInternal Market (OHIM), which has its seat in● 106 ●

Alicante (Spain). A Community Trademark is ofunitary character (Art. 1 CTMR). It grants a unitary
trademark right upon registration, covering thewhole of the European Community, which will be
expanded considerably upon accession of 10 new
member states from 1st May 2004. While
Community Trademark Rights based on the CTMR
may only be obtained through registration, themember states may also grant trademark rights
solely upon use under the TMD, as can be seen in
the United Kingdom or Germany. If registeredmarks, marks acquired through use or otherbusiness indications of more than local significanceare protected by national law, they may constitute a
relative obstacle to the registration of a Community
trademark, provided their proprietor files an
opposition (Art. 8 (6) CTMR), as the CTMR system
has adopted the opposition system. The officeconducts searches for similar marks, but these areof merely informative nature. Notably, theCommunity Trademark Regulation and theTrademark Directive were prepared in parallel,
resulting in wording which is almost identical – andso is the wording of the central provisions in most
European Trademark Laws, which transform the
Directive into national law.
Compared to practice in Japan, the European
approach is much more generous towards
registration of three-dimensional shapes, inparticular when it comes to shapes of packaging.
This can have considerable implications for theowners of trademark rights or enterprises who use
or plan to use, shapes as a means of attracting theattention of customers.
The uniform Benelux Trademark Law served
as a model for the registrations of shapes as
trademarks in the TMD and CTMR. The Benelux
countries had taken a very liberal view towards theprotection of shapes, allowing protection for such
shapes as a spiral-cone for salty crackers, chocolate
candy or a capsule for pharmaceutical drugs(combined with colours).
Prior to the introduction of the Trademark
Directive, three-dimensional shapes in Germany, f.
e., could in principle only gain protection if the
shape had become recognized through use(“Ausstattungsschutz”). The situation in most
European countries was similar, irrespective
whether their trademark-systems were based onregistration or use.
2

Requirements for Registration

The European Court of Justice has devised athree-step-test for product-configuration marks
seeking registration. If the mark applied for does
not comprise an element found to be distinctivefrom the outset, like a distinctive wordmark, it will
have to meet the following criteria:
It must have the capacity to constitute a mark(Art. 2 TMD/ Art. 4 CTMR), e.g. begraphically presentable and have distinctive
power to (abstractly) distinguish goods orservices of one enterprise from those of otherenterprises.
most importantly – it must not be excluded
from protection under one of the provisions
specificallypertaining
toproduct
configurations or shapes of packaging set out
in Art. 3 (1) (e) (i)-(iii) TMD/ Art. 7 (1) (e)(i)-(iii) CTMR, e.g. the shape must not
result from the nature of the goods
themselves
be necessary to obtain a technical result,orgive substantial value to the goods.
In a third step, the sign must not fall under oneof the absolute obstacles to registration, which
are applicable to all kinds of signs alike, suchas descriptiveness, conflicts with the publicorder or morality etc.
These requirements are interpreted asfollows:
2.1 Capability to Function as a MarkThe first step in examination is whether thesign applied for is one of the signs of which a
Community Trademark may consist. Art. 4 CTMR/
2 TMD). It has to meet only two requirements:
Capability of graphical representation and thePower to distinguish the goods or services of one
undertaking from those of other undertakings. The
list of protectable signs names the most commonlyused forms of marks “particularly words, including
personal names, designs, letters, numerals, theshape of goods or of their packaging,” but isnon-exhaustive.
2.1.1 Capability of Being Represented
Graphically
The requirement of a graphic representation is
not difficult to fulfil. While no special requirements
are spelled out in the CTM Regulation, Rule 3 (4) of
the Regulation implementing the CTMR
(Implementing Regulation - IR) states that it must
be indicated in the application that athree-dimensional mark is being applied for. The
representation of the mark may consist of aphotographic reproduction or a graphicalrepresentation and may consist of up to six different
perspectives. The applicant may give a descriptionof the mark, which is not mandatory, but may help
OHIM to determine the nature of the mark.
2.1.2 Registrable Signs - “Abstract Power toDistinguish”
According to OHIM’ s Examination Guidelines
for CTM-applications, the term “sign” is to beinterpreted broadly by examiners. On the outset,
every sign, which can be graphically displayed andcan function as a mark, is registrable, provided that
it is “ capable of distinguishing the goods orservices of one undertaking from those of other● 107 ●IIP Bulletin 2003

undertakings”. It follows that there is nopredetermined list of admissible genres oftrademarks and no forms of trade marks which are
excluded per se. Signs, which are so simple orcommonplace that they are not apt to fulfil thefunctions of a trademark in respect of any product,
are excluded under this heading. The ECJ has
repeatedly stated that it is the essential function ofa mark to guarantee the origin of a product.
Possible other functions of marks are included inthis main function, such as the quality-function anda potential for communication with consumers.
As far as shapes of products and packaging areconcerned, the European Court of Justice (ECJ)
stated that “the criteria for assessing the distinctive
character of three-dimensional trademarks (…) arethus no different from those to be applied to othercategories of trademarks”, in particular, there is no
reason to apply stricter standards. Further, the ECJ
stated clearly, that the Directive in no way requires
the three-dimensional shape of an article to include
a capricious addition, such as an embellishment
which has no functional purpose, as a prerequisite
for distinctiveness. Requirements of originality, asboth OHIM and the German Federal Court for
Patents were inclined to set up, were likewise ruled
out.
“The shape in question must simply be capableof distinguishing the products of the proprietor of
the trade mark from those of other undertakings
and thus fulfil its essential purpose of guaranteeing
the origin of the product.”
2.2 SpecificObstaclesfor
Product
Configuration Marks
The broad concept of what can constitute a
trademark is balanced by specific requirements
pertaining to three-dimensional marks which are“exclusively composed of the shapes of goods”（ Art. 7(1)(e) CTMR ） . Signs which consist
exclusively of(i) the shape which results from the nature of thegoods themselves; or(ii) the shape of goods which is necessary toobtain a technical result; or(iii) the shape which gives substantial value to thegoods
are excluded from registration with the purpose to
avoid permanent monopoly-rights in essential,
technical or aesthetical product features, which do
not serve as indications, but derive from thesubstantial nature of the type of product.
2.2.1 Interrelationship between Specific andGeneral Reasons of Refusal
Although there is no pronounced statement by
the ECJ concerning the interrelationship among thevarious reasons for refusal laid out in Articles 3
TMD and 7 TMD, the Supreme Court of Germany
has issued three referrals for preliminary rulings on
Nov. 23, 2000, which might lead to an answer.

IIP Bulletin 2003

2.1.1 View taken by the German Federal
Supreme Court
The German Federal Supreme Court has
prompted an active stand in several references tothe ECJ, proposing solutions, which the ECJ
frequently accepted in its judgements, and thus
played an active role in the development ofEuropean Law. It has also shown a determination toquick compliance with the ECJ’ s guidelines and toensure their incorporation into the German legal
system in due time.
Lately, the German Supreme Court clarified its
approachregarding
product
configuration
trademarks in its three decisions of Nov. 23, 2000,
mentioned above, which concern trademark
applications for a forklift truck, a torch and a watch.
It held that any sign has the potential to become a
trademark, provided it is abstractly capable todistinguish goods or services in the sense of Art. 2
TMD, whereas the requirement of the power todistinguish in view of the products designated in
the application, comes to be assessed under Art. 3(1)(b) TMD, which, unlike Art. 3 (1)(b) TMD (Art. 7(1)(b) CTMR) , do not expressly state arequirement of distinctive power in respect of thegoods, but the German Supreme Court concludes
this from the wording of the TMD and therationale of the reasons of refusal.
In order to be capable of trademark protection
under Art. 2 TMD, as the German Supreme Court
interpreted it, the sign must not be a feature of the
product deriving from its technical function. It mustbear non-technical elements, which go beyond thebasic functional shape of the respective goods andare separable, if not physically, so in concept, fromthe goods themselves. Thus, the sign must be
suited to fulfil the function of a trademark as an
identifying sign. In this sense, the trademark must
be separable from the product.
When testing the reasons for refusal set out in
Art. 3(1)(e) TMD, the Court came to a narrow
scope of these provisions, based on the wording“exclusively” to exclude shapes which incorporated
other elements and “necessary” to allow for a test
whether alternative shapes could be chosen toachieve the same technical result. It compared the“technically necessary basic shape” of forklift
trucks, torches and watches to the shapes in theapplications. In the case of the forklift truck, a very
successful product by Linde AG, which wasawarded for its outstanding design, the court named
the motor, wheels, forklift and drivers’ stand as
basic technical features. It concluded that there
were many aspects in the appearance of the shapein the application, like the shape of the driver’s
cabin, the wheel stands, the pentagonal window andthe beetle-like shape of the rear part of the vehicle,
which were not essential to the nature of a forklift
trucks in general, and further, which were notnecessary to obtain a technical result. The essential● 108 ●

function being to lift and move heavy goods, thecourt held that there were multiple otherpossibilities to design a forklift truck.
The Court voiced its preference to balance theapplicants’ interest of having his marks protected,
against the general policy to prevent inappropriatemonopolisation of certain product features that,unless protected by patents, design registrations or
copyright, should be in the public domain, under theheading of Art. 3(1)(c) TMD, instead of a broad
construction of Art. 3(1)(e) TMD. It emphasises
above all “the consideration that the obstacle toregistration in article 3(1)(e) TMD could not be
overcome through use within the meaning of Art.
3(3) TMD,” which did not appear to be justified.
Under this opinion, the main test forregistrability would depend on the construction of
the distinctiveness requirement within the meaningof Art. 3 (1)(b) TMD. This provision denies
registration to trademarks, which may serve, intrade, to designate certain features of the product,
like its kind or quality, etc. The German Supreme
Court defines the distinctive character of a mark as“the specific capacity innate in a trademark, to be
regarded as a means of distinguishing the productsof one enterprise from those of other enterprises”.
It applied a generous standard in the sense thateach sort and any degree of distinctive power were
sufficient to overcome this obstacle to protection.
The German interpretation of the Trademark Law
holds, that this provision expresses the interest of
the public, with special emphasis on thecompetitor’s interest to keep shapes of goods freefor general use (“Freihaltebedürfnis”).
The Court now referred the question to the
ECJ, whether Art. 3(1)(c) TMD is of independentsignificance in the assessment of registrability forthree-dimensional marks that represent the shapeof goods alongside Art. 3(1)(e) TMD. And, if theanswer was in the affirmative, whether theexamination under Art. 3(1)(c) TMD – unlike undersubpragraph (e) – must take into account theinterest of the public in the free use of a productshape in such a way that registration is excluded inany event as a matter of principle and, as a rule,would only become possible for trademarks thathave acquired distinctiveness through use (Art. 3(2) TMD).
2.2.1.2 The ECJ’ s Approach and theOpinion of the Attorney General
The view of the German Supreme Court is in
sharp contrast with the interpretation of theEuropean Court of Justice (ECJ) in its
Philips/Remington judgement. The case concerned
the shape of a three-headed rotary electric shaver,which had been protected by a patent, but the termfor patent protection had expired and a competitor,
Remington, had copied the shape.
The ECJ has stated that the purpose of
trademark protection is, inter alia, to guarantee thetrademark as an indication of origin. As the seventh
recital in the preamble to the TMD prescribes, thegrounds for refusal listed in Art. 7 (1)(e)CTMR are
exhaustive. They must be interpreted in the light ofthe public interest underlying each ground forrefusal. The criteria in Art. 7 (1) (e) CTMR are to
be assessed separately. If only one of them issatisfied in respect of a sign consisting exclusivelyof the shape of the product, that shape is exempt
from registration. The ECJ stipulated that“the rationale of the grounds for refusal ofregistration laid down in Article 3(1)(e) of the
Directive, is to prevent trade mark protection
from granting its proprietor a monopoly ontechnical solutions or functional characteristics
of a product which a user is likely to seek inthe products of competitors”.
Their underlying intention is to prevent
trademark rights to extend beyond signs which
serve to distinguish a product or service from thoseof competitors. The trademark right should notform an obstacle for competitors to freely offer forsale products, which incorporate certain technicalsolutions or functional characteristics.
The “need to keep free” in respect of signs
which consist of the shapes of good is recognized by
the ECJ, but interpreted the preconditions of Art. 3(1) (e) (ii) TMD to protect the public interest to
freely use certain shapes. Consequently, thisprovision shall apply to each shape whose essential
characteristics perform a technical function and,taking into account the view of the product designer,“was chosen to achieve this function”. The Court
stated clearly, that it would be no defense toestablish that certain elements were not chosen tocontribute to the technical effect.
The Attorney General endeavours to apply
this reasoning to the other subparagraphs of Art.
3(1)(e)TMD as well to the effect, that athree-dimensional sign in respect of the shape of
goods could not be registered if its essential
characteristics result from the nature of the goods
or give substantial value to the goods.
Concerning Art. 3(1)(c) TMD, the Attorney
General concluded from the “Chiemsee”-Decisionof the ECJ, that the public interest underlying thisprovision was to keep descriptive indications free
for use, the rationale of this reason for refusal beingthat they serve to indicate certain characteristics ofthe goods and thus generate a positive image. It
follows that the ECJ recognizes the necessity tointerpret Art. 3 (1) (c) TMD in the light of theunderlying public interest to keep certain signs free.
But it did not stipulate that three-dimensional signs
in respect of the shape of goods were subject tospecial treatment. They would simply have toundergo multiple examinations to test theircapacity to function as a mark.
The Attorney General admits to the fact that it
is not likely that many shapes of goods will be● 109 ●IIP Bulletin 2003

registrable by these standards. He directs theattention to the fact that these difficulties inpractice are due to the nature of three-dimensional
shapes themselves, as well as to the consumers’
habits in perceiving shapes of goods, they do notderive from an allegedly stricter assessment of
their distinctive character.
In this scheme for examination, the reasons ofrefusal under Art. 3(1)(e) TMD are to be assessedin a second step, as a refusal on these grounds
cannot be overcome if the product acquires
distinctiveness through use at a later time.
2.2.2 Shape Resulting from the Nature of the
Designated Goods (Art. 3(1)(e)(i)TMD/
Art. 7(1)(e)(i) CTMR)
The shapes of a football or of an egg are
mentioned as examples in the Guidelines. Recently,
the European Court of First Instance (CFI) ruledthat this provision does not apply if the shape inquestion is not common in respect of thedesignated goods on the market. It overruled adecision by OHIM concerning the shape of a bar ofsoap on the grounds that the shape had special
features.
2.2.3 Shape Necessary to Obtain a TechnicalResult (Art. 3(1)(e)(ii) TMD / Art.7(1)(e)(ii) CTMR)
In its Philips/Remington- judgement, theCourt decided that “there is nothing in the wordingof that provision” to allow a circumvention of thisobstacle by establishing that the same technicalresult could be secured by use of alternative shapes.
It held that Art. 3(1)(e)(ii) TMD reflected “thelegitimate aim of not allowing individuals to use
registration of a mark in order to acquire orperpetuate exclusive rights relating to technicalsolutions. Where the essential functional
characteristics of the shape of a product are
attributable solely to the technical result, Article
3(1)(e) TMD, second indent, precludes registrationof a sign consisting of that shape, even if thattechnical result can be achieved by other shapes”.
2.2.4 Shape which gives Substantial Value tothe Goods
Art. 3 (1)(e)(i) TMD aims to delimit
three-dimensionalmarks
inrelationtodesign-protection for decorative objects, which
derive their value exclusively from their aesthetic
appearance, so that the requirement of separability
can not be fulfilled. Unclear and rarely invoked, thisparagraph is subject to harsh criticism. The firstrefusals on the grounds of the identical German
provision transforming Art. 3 (1)(e)(ii) TMD werepronounced by the German Federal Court for
Patents for three sets of jewellery rings.
Where the particular shape of a product does
not fall under the grounds of exclusion listed in theArt. 3 (1) (e) TMD and Art. 7 (1)(e) CTMR, there is
no reason to prevent a sign consisting exclusivelyof the shape of a product from being registrable or

IIP Bulletin 2003

valid if it satisfies the normal criteria for trademark
protection.
2.3 General Reasons for Refusal – Art. 3 (1)(b),(c), (d) TMD
Concerning the other reasons for refusal, theECJ recently clarified that the provisions in Art. 3(1) (b), (c) and (d) TMD are exhaustive in the sensethat “there is no category of marks” which does notcome under one of these provisions but is excluded
from registration under Art. 3 (1) (a) TMD as being
incapable to distinguish goods or services.
2.3.1 Distinctive Character in Respect of the
Products for which the Trademark isused Art. 7 (1)(b) CTMR
Art. 7(1)(b) CTMR, (Art. 3 (1) (b) TMD) only
excludes trademarks which are devoid of any
distinctive character. This wording has repeatedly
been interpreted to establish a very low standard of
distinctiveness. As long as some distinctive
character can be attributed to it, a mark ought not
be refused under this head. The distinctive
character of a mark, be it inherent or acquired
through use, has to be assessed in relation to thegoods or services in respect of which registration isapplied for.
Under Art. 7(1)(c) CTMR, trademarks are notregistrable if they consist exclusively of signs orindications which may serve, in trade, to designate
the kind, quality, quantity, intended purpose, value,geographical origin, time of production of the goods
or of rendering of the service, or of othercharacteristics of the goods or services.
Complementary, Art. 12 of the CTMR provides thatthe rights conferred by the trademark do not entitle
the proprietor to prohibit a third party from using,in the course of trade, indications concerning thekind, quality, quantity, intended purpose, value,geographical origin, the time of production of thegoods or the time of rendering the service, or othercharacteristics of the goods or service, provided heuses them in accordance with honest practices inindustrial or commercial matters.
Taking the provisions of Art. 7(1)(b) and 12
CTMR together, the ECJ concludes that theprohibition to register purely descriptive signs orindications as trademarks aims at preventing theregistration of signs which can not fulfil the functionof identifying the undertaking that markets them,because they are no different from the usual way ofdesignating the relevant goods or services or theircharacteristics and thus devoid of the distinctive
character needed for that function. This
interpretation is the only one the ECJ holds to becompatible with Art. 4 CTMR.The Court of First
Instance, although stating that three-dimensionalmarks must not be treated different from otherkinds of marks, bases its decisions on theassumption, without further fact-finding, that theshape of goods is usually not perceived as anindication of origin in the eyes of consumers. It● 110 ●

refused applications for the shapes of Tabs fordishwasher detergent, although in combination withcolours, in 11 cases and an application for the shapeof a torch, on the grounds that they were composedof obvious design elements, which were common in
the respective market segment.
The practice of OHIM’ s Boards of Appeal isstill lacking a clear direction or a definition of
abstract criteria, as can be seen by the examples ofa glass for mustard, which was refused as lacking
distinctive character, while a glass for soluble coffee
was found to be distinctive. It can be said in general,that shapes of containers or packaging, which are
not combined with a word mark, will pass the testof not being determined by the nature of the goods.
The test for inherent distinctiveness centersaround the question whether a shape is “common,”“characteristic”, shows “a certain amount oforiginality” or differs from the same kind of productalready on the market. In contrast to the practice of
the JPO, a great range of Community Trademarks
consisting of the shape of bottles has beenregistered.
OHIM has admitted registration of marks,
which exclusively consist of shapes of goods orparts thereof, as being inherently distinctive.
Examples include the car body of the old and the
new Volkswagen “Beetle” cars, registered forautomobiles in Class 28 and different goods in class
16, as well as the new “Mini Cooper”, which has
been registered i. a. for “automobiles” and “toyautomobiles”,
the
shape
of
a
round
chocolate-hazelnut-candy in Class 30 and of diverse
clips for fountain pens, like Watermen’ s, or the capof Edding’ s felt tip pens.
The German Federal Curt of Patents applies
similar criteria. In addition to asking whether acertain shape is common or unusual in comparison
to those existing on the market and those likely to
be used by competitors in the future, it examines
whether consumers in the resoective field of goods
have come to recognize shapes in general as
indicators of origin. It has found, that there exists apractice by suppliers of beverages to use shapes ofbottles as means of distinguishing their products(“Dimple”).
The German Patent Court has submitted areferral to the ECJ, in regard of a bottle for softener
It compared the shape of the bottle to containers
usually used for softeners. It referred the questions
to the ECJ, if packaging falls under the term “shapeof the goods” in Art. 3 (1)(e) TMD and whether the
shape of packaging can be a description of the goodsin the sense of Art. 3 (1)(c) TMD. In the case todecide, the Court found that many similar shapes ofbottles for softeners were on the market, which
could be reduced to one basic shape with certain
common characteristics As the sign seeking
protection consisted of a basic shape, which showedthese characteristics, the Patent Court holds it to

be descriptive of the goods and sees a need to keep
it free for the use by competitors. The court heldthat the public interest in the free use of shapes
was not only at issue when basic shapes andindispensable designations were concerned, butshould extend to a perceived future need to use
such signs to designate the goods.
2.3.3 Descriptive Designations (Art. 3 (c)TMD/ Art. 7(1)(c) CTMR)
For wordmarks, the ECJ has set out a low
threshold for distinctiveness, excluding only thosesigns and indications “which may serve in normal
usage from a consumers’ point of view” todesignate the goods or services of the application“either directly or by reference to one of theiressential characteristics.” The standard ofassessment for wordmarks set by the ECJ is
whether “the word in question may be viewed as anormal way of referring to the goods (or services)
or of representing their essential characteristics incommon parlance” among the relevant class of
consumers.
“Furthermore, a mark composed of signs orindications satisfying that definition should not
be refused registration unless it comprises noother signs or indications and, in addition, thepurely descriptive signs or indications of which
it is composed are not presented or configuredin any manner that distinguishes the resultant
whole from the usual way of designating thegoods or services concerned or their essential
characteristics.”“Any perceptible difference” between awordmark applied for and the common parlance
used by consumers is found apt to confer distinctive
character on the sign, enabling it to be registered asa mark. In Section 8.4.2. of the Examination
Guidelines, it is pointed out that the usage in thespecific market segment should be taken into
account, and when an “indication is “borrowed”
from a trade other than that covered by theapplication”, there is no reason to refuse theapplication. F.e., expressions such as 4X3 inbuilding trades refer to sizes of products, but might
not be common usage to describe a dozen eggs in
the retail trade. Thus, a lemon juice bottle in the
shape of a lemon or a container forcoconut-icecream in the shape of a coconut might
be considered to be descriptive of the goods,
leaving it to the scrutiny of the examiner to find
how many changes must be made to create a
distinctive container which can stand on its own. An
examle for a “borrowed” shape is admitted theshape of a cigar to be registered for “small flasks
for perfume”. It held that the sign did not show thedesignated goods in a way determined by theirnature and did not have the effect of a description of
the goods. It concluded that the shape had
distinctive power, because it did not incorporate anormal or common indication of the contents and● 111 ●IIP Bulletin 2003

did not consist exclusively of a simple or decorative
shape .
2.4 Acquired Distinctiveness through Use
As laid out in Art. 3(3) TMD (Art. 7(3) CTMR),
a trademark shall not be refused registration or be
declared invalid in accordance with par. 1 (b), (c) or(d), if it has become distinctive in relation to thedesignated products through use. Furthermore,member states may foresee to apply this provisionin cases where a sign acquired distinctive character
after the date of application or registration, as has
been laid out in Art. 51 (2) CTMR. At first, it has
to be kept in mind when interpreting this article,
that a shape which has been refused registration
pursuant to Art. 3 (1) (e) TMD, can under nocircumstances be registered by virtue of Art. 3 (3)TMD; however, Art. 3(3) TMD enables a mark,which was refused under Art. 3 (1)(b), (c) or (d)TMD lacking inherent distinctiveness, to acquiredistinctive character through use.
“Distinctive character acquired through use”
means, according to the ECJ, “that the mark must
serve to identify the product in respect of which
registration is applied for, as originating from aparticular undertaking and thus to distinguish that
product from goods of other undertakings”.
In assessing the distinctinctive character, thefollowing facts may inter alia, be taken into account:the market share held by the mark; how intensive,
geographically widespread and long-standing use of
the mark has been; the amount invested by theundertaking in promoting the mark; the proportionof the relevant class of persons who, because of themark, identify goods as originating from a particularundertaking; and statements from chambers ofcommerce and industry or other trade andprofessional associations. It is not sufficient,however, to refer to general, abstract data, such aspredetermined percentages.
If assessing the distinctive character of a signconsisting in the shape of a product, the presumed
expectations of an average consumer of thecategory of goods or services in question, who isreasonably well-informed and reasonably observant
and circumspect is to be taken into account. Courts
will have to secure that the “identification, by therelevant class of persons, of the product as
originating from a given undertaking must be as aresult of the use of the mark as a trade mark andthus as a result of the nature and effect of it, whichmake it capable of distinguishing the productconcerned from those of other undertakings.”
In order to establish distinctiveness throughuse for a Community Trademark, thesepreconditions need not be met for the wholeterritory of the European Community, but have tocover essential parts. Whereas this territory does
not have to conform with state boundaries, it isdetrimental if one of the bigger member states is
missing in the statistics.

IIP Bulletin 2003

If registration has to be based on acquired
distinctiveness, it is advisable to apply for nationalmarks in the member states, where thepreconditios of acquired distinctiveness need only
to be met in respect of the states’ territory. The
shape of Werther’ s Original caramel candy is agood example of a very plain shape, an oval with anoval line on the top side of a caramel candy(claiming the colour “ caramel ” , and the goods„confectionery in Class 30), for distinctivenessacquired through use, as was recognized by theGerman Federal Court for Patents. The ownersucceeded in convoncing the Court that shapes ofsweets are usually shown on the packaging andtherefore will be recognized by consumers in therespective market segment supported by aquestionnaire, preceded by a change of the designof it’ s packaging, which featured the shapes ofcandy without wrapping.
3

Relationship with
Property Rights

otherIntellectual

Another problem is, whether the proprietor ofa monopoly right under a patent, as was the case in
Philips/Remington, a utility model or a design
patent, may acquire distinctiveness as a result of its
exclusive use. The ECJ affirmed this, by stating“ that, where a trader has been the only
supplier of particular goods to the market,
extensive use of a sign which consists of the shapeof those goods may be sufficient to give the sign a
distinctive character for the purposes of Article 3(3)of the Directive in circumstances where, as a resultof that use, a substantial proportion of the relevant
class of persons associates that shape with that
trader and no other undertaking or believes that
goods of that shape come from that trader.” It lies
with the national courts to verify that thecircumstances of acquired distinctiveness areproven to exist, on the basis of specific and reliable
data. “The presumed expectations of an average
consumer of the category of goods or services inquestion, who is reasonably well-informed andreasonably observant and circumspect ”
aresignificant and, most importantly, the fact “that theidentification, (...) of the product as originating froma given undertaking is as a result of the use of themark as a trade mark. ” has to be proven.
Consequently, the existence of an expired patent or
utility patent might be detrimental for the
trademark holder insofar, as it might be used toargue that the patented features of the product arenecessary to obtain a technical result. On the other
hand, it might be helpful to establish an associationof origin from one enterprise among the relevant
circles of consumers. The difficulty lies, again, in
sending the proper messages to the relevant circle
of consumers and proving, that their association oforigin is based on a perception of the● 112 ●

product-feature in question as a trademark.
In the German Trade Mark Act, it is stated in§13 that a trademark registration may be cancelled,
if another person acquired a right which entitles
him to prohibit the use of the registered trade markthroughout the territory of the Federal Republic of
Germany. This right has to be of earlier time rank
than the trademark right. Such rights can be, inparticular: rights to a name, rights of personalportrayal, copyrights, plant variety designations,appellations of geographical origin and otherindustrial property rights.
4

Assessing
Similarity
dimensional MarksofThree-In Europe, the test for similarity will occur inthe case of oppositionsagainst trademark
applications, or in cases of infringement. The latterare harder to track, as they will in first instanceoccur before national Courts, often on lower
instance or district court level, partly with limited
legal remedies.
There have been a few decisions in Germany.
The Federal Patent Court decided in the first
opposition cases in 2001. It basically applied thesame criteria as in the assessment whether there
exists a likelihood of confusion between otherforms of marks, when the designated goods and themarks, as they appear in the registration, arecompared. As is the practice in other cases, too, thecourt decided that a danger of confusion does not
result from the existence of non-distinctive
elements in both marks. In the case of an
opposition against a three-dimensional mark which
consisted in the shape of a metall-container withroundedcorners,
seeking
protectionfor“animal-food”, based on a mark registered for asimilar container, which was registered in respectof identical goods, the court denied a likelihood ofconfusion. It attributed an extremely narrow scopeof protection to the mark, on which the opposition
was based, assuming that the mark would beperceived as a container in the first place and not
directly as an indication of origin. Further, it foundthat metall cans with rounded corners werecommonly used as containers for animal food, sothat they were descriptive. This would not preclude
the protection of variations of the basic shape as
trademarks. But a very narrow scope of protection
had to be attributed to such marks, which could notcover the basic shape itself, but only the specificvariation and its characteristic features. In the caseof the animal-food-containers, both cans embodied
such variations in their shape, the structure on
their sides and the number of corners, so that the
court eventually ruled out a collision.

Ⅲ Conclusion

An evaluation and thorough comparison of

trademark protection for shapes would have toinclude its balance with other intellectual property
rights, which would go beyond the scope of thisarticle. A few remarks can be made, however, froma “purely trademark” point of view.
As the evolutional history of trademarks
shows, it is no new phenomenon to redefine thesubject matter protected under Trademark Law tocover new forms of marks. Word marks, f. e. were
not granted protection in Germany before theissuance of the Warenzeichengesetz in 1894, as one
was sceptical to allow monopolies in words. Today,
wordmarks make up the classic form of trademarks
worldwide. Among the so called “non-traditional
trademarks”,
three-dimensional
trademarkapplications constitute the vast majority.
While it is evident, that theories aimed at
drawing a clear borderline between the protectionof the technical features, creative and aesthetic
achievements, are still being carved out and will be
under discussion for some time, especially in theEuropean Community, where it lies with the ECJ to
finally determine the applicable standards and thescope of protection, tendencies in Japan and Europe
can be made out.
While Japanese current practice and legal
opinion tends to take a negative view towards
trademark protection for shapes, enterprises
welcomed the amendment of the Trademark Law inthe beginning, but became frustrated over time. As
has been pointed out, part of the applications were
probably directed at gaining trademark protection
for technically functional shapes, others clearly
concerned configurations which have been foundinherently distinctive in Europe. Currently,
three-dimensional marks are either functioning asmeans of protection for advertising-characters ortrade-dress, comprised of a combination of word or
design marks and shapes, or used to support a
claim under the Unfair Competition Prevention
Law .
As far as the relationship between trademarks
and design patents is concerned, it seems to be a
notion that an overlap of different protective rights
must be avoided in any case.
OHIM and the European Courts allow for agenerous registration of “shape-marks” incomparison. The ECJ’s strict application of thedoctrine of functionality to essential productfeatures, which leaves no room for arguing, that atechnical function could be secured by alternative
shapes at no higher cost, is in line with the U.S.
Supreme Courts ruling in TrafFix, according towhich a product appearance which serves a
primarily utilitarian or aesthetic role, will no longer
be given trademark protection, and the fact thatcompetitively effective alternative embodiments
might exist, is not sufficient to support protection
as a trademark.
The Supreme Court suggested in Wal-Mart,● 113 ●IIP Bulletin 2003

that a design patent, while not apt to provide
protection at the time of market entry, may be used
to boost the effectiveness of product appearance
features of trademarks which require secondary
meaning. This can only be presumed, if a design
patent for the same product does not preclude
trademark protection, neither upon issuance of thedesign patent, nor when the term of protection
expires. This is in line with the notion of the ECJ
stated above Decsion of in Philips/Remington.
In mature markets, businesses have to offer
their goods and services in highly competitive
surroundings. While quality competition is often
levelled among performers, owing to equally highstandards, businesses have to turn to other meansof advertising to let their products stand out. While
wordmarks and Logos were employed at first, the“Television-age ” brought about new forms ofadvertising, which often featured characters or
speaking, singing personifications of the advertised
goods. Recently, a producer of margarine in the
U.S.A. has introduced the first margarine-package,
which speaks and wriggles, when approached. As aresult, we are surrounded by signals, including
trademark-signals, which are conveyed through thedesign of goods or packaging, colour, smell, sound,moving advertising clips or invented characters,
which suppliers of goods or services use to convey
messages to consumers. For a long time it was
simply assumed that the shape of a product itself
was nothing else than just that. It is a somewhat
modern apprehension that product configurations,packaging or even sounds, smells or light cantransport a message to qualify as a trademark.
One can say that there is an international trend
to expand the concept of trademarks to include the
new means of product-recognition, such as shapes,
smells, sounds, movement, holograms orformations of light, based on their actual use on themarket.
Of course it is recognised the shape of a
product may be a sign – but may not inevitably beread as a sign. The problem will be to separate themultitudinous messages sent and provide
protection for those, which serve as an indicator of
origin or product differentiation.
Patent Attorney Ushiki, a strong critic of the“Products Configuration Registration System”,
conceded that there seemed to be a need for theregistration of three-dimensional marks in Japan, as
there were registered device-marks, which
consisted of depictions of objects which were in
reality three-dimensional, f. e. clips of fountain pensor shop signs, and had been registered after
expiration of or parallel to a design right. The
voiced intent of the Japanese legislators inamending the trademark law and expanding thedefinition of protected marks to cover
three-dimensional objects, was to establish apositive mode of protection for well-known

IIP Bulletin 2003

configurations of goods as indicators of origin or
quality, which had only been protected passively inthe past under the Unfair Competition Prevention
Law.
Having recognised the occurrence of suchsigns in commerce, and decided to legally recognizethat such signs, as far as they can serve as
indications of origin, as trademarks, it is notjustified to principally deny their suitability to fulfil
this function based on a lack of familiarisation of
consumers with certain new types of marks. The
German Supreme Court’ argument goes in thesame direction where it states that a treatment of
three-dimensional marks which would apply too
strict requirements to their registrability, would“restrict the possibility in the public’s
interpretation following the admissibility of these
trademarks in a manner not intended by theTrademark Directive.” As v. Bomhard puts it, “itwould mean to turn back the clock of trademark law,
if courts blankly assume that consumers’orientation is focused on the usual word- and device
mark only and per se”.
While the concerns against allowing trade
mark protection for shapes and packages which do
not display wordmarks, are well founded and are
not to be taken lightly, one might ask if the strict
approach, which is founded on “market facts”
allegedly, which, if one takes the example ofpackaging or bottle shapes, are viewed in a totallydifferent way ion a market where they perform thesame functions, one might ask whether denying
their inherent distinctiveness per se, does not run
contrary to the reasons why the registration ofshapes as trademarks was introduced in the firstplace. If they can only be protected as
trademark-elements which are not distinctive, theirfunction as indictors of product origin is not taken
into account to the extent it would deserve. The
reason behind the introduction of the “new marks”
is to allow protection for new means of indicating
origin, which should be allowed to be flexibly
carved out according to the inventiveness andneeds of trademark owners, in cooperation with thetrademark authorities and the judicative. If certain
forms of marks are excluded from registration forformal reasons, which could easily be resolved, or
non-technical shapes, which in fact serve as signs ofrecognition, are excluded from protection, it seems
to fall one step short to meet the purpose of thesystem.

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● 115 ●IIP Bulletin 2003