# C_2017224EN.01001801.xml

| 13.7.2017 | EN | Official Journal of the European Union | C 224/18 |
| --- | --- | --- | --- |

13.7.2017

EN

Official Journal of the European Union

C 224/18

---

JUDGMENT OF THE COURT

of 6 April 2017

in Case E-5/16

Municipality of Oslo

(Directive 2008/95/EC — Trade mark — Copyright — Public policy — Public domain — Distinctiveness — Descriptiveness — Signs consisting exclusively of the shape which gives substantial value to the goods)

(Directive 2008/95/EC — Trade mark — Copyright — Public policy — Public domain — Distinctiveness — Descriptiveness — Signs consisting exclusively of the shape which gives substantial value to the goods)

(2017/C 224/09)

In Case E-5/16, Municipality of Oslo – REQUEST to the Court under Article 34 of the Agreement between the EFTA States on the Establishment of a Surveillance Authority and a Court of Justice by the Norwegian Board of Appeal for Industrial Property Rights (Klagenemnda for industrielle rettigheter) concerning the interpretation of Directive 2008/95/EC to approximate the laws of the Member States relating to trade marks, and in particular Article 3(1)(b) to (f) thereof, the Court, composed of Carl Baudenbacher, President and Judge-Rapporteur, Per Christiansen and Páll Hreinsson, Judges, gave judgment on 6 April 2017, the operative part of which is as follows:

Klagenemnda for industrielle rettigheter

| 1. | The registration as a trade mark of a sign which consists of works for which the copyright protection period has expired, is not in itself contrary to public policy or accepted principles of morality within the meaning of Article 3(1)(f) of Directive 2008/95/EC. |
| --- | --- |

1.

The registration as a trade mark of a sign which consists of works for which the copyright protection period has expired, is not in itself contrary to public policy or accepted principles of morality within the meaning of Article 3(1)(f) of Directive 2008/95/EC.

| 2. | Whether registration for signs that consist of works of art as a trade mark shall be refused on the basis of accepted principles of morality within the meaning of Article 3(1)(f) of Directive 2008/95/EC depends, in particular, on the status or perception of the artwork in the relevant EEA State. The risk of misappropriation or desecration of a work may be relevant in this assessment. |
| --- | --- |

2.

Whether registration for signs that consist of works of art as a trade mark shall be refused on the basis of accepted principles of morality within the meaning of Article 3(1)(f) of Directive 2008/95/EC depends, in particular, on the status or perception of the artwork in the relevant EEA State. The risk of misappropriation or desecration of a work may be relevant in this assessment.

| 3. | Registration of a sign may only be refused on basis of the public policy exception provided for in Article 3(1)(f) of Directive 2008/95/EC, if the sign consists exclusively of a work pertaining to the public domain and registration of this sign would constitute a genuine and sufficiently serious threat to a fundamental interest of society. |
| --- | --- |

3.

Registration of a sign may only be refused on basis of the public policy exception provided for in Article 3(1)(f) of Directive 2008/95/EC, if the sign consists exclusively of a work pertaining to the public domain and registration of this sign would constitute a genuine and sufficiently serious threat to a fundamental interest of society.

| 4. | Article 3(1)(e)(iii) of Directive 2008/95/EC may apply to two-dimensional representations of three-dimensional shapes, including sculptures. |
| --- | --- |

4.

Article 3(1)(e)(iii) of Directive 2008/95/EC may apply to two-dimensional representations of three-dimensional shapes, including sculptures.

| 5. | Article 3(1)(c) of Directive 2008/95/EC must be interpreted as being applicable to two-dimensional and three-dimensional representations of the shape of a good. |
| --- | --- |

5.

Article 3(1)(c) of Directive 2008/95/EC must be interpreted as being applicable to two-dimensional and three-dimensional representations of the shape of a good.

| 6. | Article 3(1)(b) of Directive 2008/95/EC must be interpreted as meaning that where a sign is descriptive within the meaning of Article 3(1)(c), that sign necessarily lacks distinctiveness under Article 3(1)(b). Should the referring body find that the sign at issue is not descriptive, it may assess its distinctiveness for the purposes of Article 3(1)(b) in relation to the goods and services covered by that mark and to the presumed expectations of an average consumer of the category of goods and services in question, who is reasonably well-informed, observant and circumspect. |
| --- | --- |

6.

Article 3(1)(b) of Directive 2008/95/EC must be interpreted as meaning that where a sign is descriptive within the meaning of Article 3(1)(c), that sign necessarily lacks distinctiveness under Article 3(1)(b). Should the referring body find that the sign at issue is not descriptive, it may assess its distinctiveness for the purposes of Article 3(1)(b) in relation to the goods and services covered by that mark and to the presumed expectations of an average consumer of the category of goods and services in question, who is reasonably well-informed, observant and circumspect.

---