Source: EURLEX
Language: en
Format: md

[Keywords](#IX)
  
[Summary](#SM)

## Keywords

1. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Signs which consist exclusively of the shape of goods which is necessary to obtain a technical result – Meaning – Presence of non-essential characteristics with no technical function – Not relevant to the ground for refusal

(Council Regulation No 40/94, Art. 7(1)(e)(ii))

2. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Signs which consist exclusively of the shape of goods which is necessary to obtain a technical result – Meaning – Existence of other shapes allowing the same technical result to be obtained – Not relevant to the ground for refusal

(Council Regulation No 40/94, Art. 7(1)(e)(ii))

3. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Signs which consist exclusively of the shape of goods which is necessary to obtain a technical result – Slavish copies of the product shape – Examination in the light of rules on unfair competition

(Council Regulation No 40/94, Art. 7(1)(e)(ii))

4. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Signs which consist exclusively of the shape of goods which is necessary to obtain a technical result – Identification of the essential characteristics of a three-dimensional sign

(Council Regulation No 40/94, Art. 7(1)(e)(ii))

5. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Signs which consist exclusively of the shape of goods which is necessary to obtain a technical result – Perception of the average consumer – Effect

(Council Regulation No 40/94, Art. 7(1)(e)(ii))

## Summary

1. As regards the fact that the ground for refusal laid down in Article 7(1)(e)(ii) of Regulation No 40/94 on the Community trade mark covers any sign consisting ‘exclusively’ of the shape of goods necessary in order to obtain a technical result, that condition is fulfilled when all the essential characteristics of a shape perform a technical function, the presence of non‑essential characteristics with no technical function being irrelevant in that context.

That interpretation reflects the idea that the presence of one or more minor arbitrary elements in a three-dimensional sign, all of whose essential characteristics are dictated by the technical solution to which that sign gives effect, does not alter the conclusion that the sign consists exclusively of the shape of goods necessary in order to obtain a technical result. In addition, since that interpretation implies that the ground for refusal under Article 7(1)(e)(ii) of Regulation No 40/94 is applicable only where all the essential characteristics of the sign are functional, it ensures that such a sign cannot be refused registration as a trade mark under that provision if the shape of the goods at issue incorporates a major non-functional element, such as a decorative or imaginative element which plays an important role in the shape.

(see paras 51-52)

2. As regards the condition that registration of a shape of goods as a trade mark may be refused under Article 7(1)(e)(ii) of Regulation No 40/94 on the Community trade mark only if the shape is ‘necessary’ to obtain the technical result intended, that condition does not mean that the shape at issue must be the only one capable of obtaining that result.

It is true that, in some cases, the same technical result may be achieved by various solutions. Thus, there may be alternative shapes, with other dimensions or another design, capable of achieving the same technical result. However, that fact does not in itself mean that registering the shape at issue as a trade mark would have no effect on the availability, to other economic operators, of the technical solution which it incorporates. In that connection, under Article 9(1) of Regulation No 40/94 registration as a trade mark of a purely functional product shape is likely to allow the proprietor of that trade mark to prevent other undertakings not only from using the same shape, but also from using similar shapes. A significant number of alternative shapes might therefore become unusable for the proprietor’s competitors. That would in particular be so. if various purely functional shapes of goods were registered at the same time, for that might completely prevent other undertakings from manufacturing and marketing certain goods having a particular technical function.

(see paras 53-57)

3. The position of an undertaking which has developed a technical solution cannot be protected, with regard to competitors placing on the market slavish copies of the product shape incorporating exactly the same solution, by conferring a monopoly on that undertaking through registering as a trade mark the three-dimensional sign consisting of that shape, but can, where appropriate, be examined in the light of rules on unfair competition.

(see para. 61)

4. The correct application of Article 7(1)(e)(ii) of Regulation No 40/94 on the Community trade mark requires the essential characteristics of the three-dimensional sign at issue to be properly identified by the authority deciding on the application for registration of the sign as a trade mark. Thus, the expression ‘essential characteristics’ must be understood as referring to the most important elements of the sign.

The identification of those essential characteristics must be carried out on a case-by-case basis. There is no systematic hierarchy of the various types of elements of which a sign may consist. Moreover, in determining the essential characteristics of a sign, the competent authority may either base its assessment directly on the overall impression produced by the sign, or first examine in turn each of the components of the sign concerned.

The identification of the essential characteristics of a three‑dimensional sign with a view to a possible application of the ground for refusal under Article 7(1)(e)(ii) of Regulation No 40/94 may, depending on the case, and in particular in view of its degree of difficulty, be carried out by means of a simple visual analysis of the sign or, on the other hand, be based on a detailed examination in which relevant criteria of assessment are taken into account, such as surveys or expert opinions, or data relating to intellectual property rights conferred previously in respect of the goods concerned.

Once the sign’s essential characteristics have been identified, the competent authority still has to ascertain whether they all perform the technical function of the goods at issue. Article 7(1)(e)(ii) of Regulation No 40/94 cannot apply when the application for registration as a trade mark relates to a shape of goods in which a non-functional element, such as a decorative or imaginative element, plays an important role. In that case, competitor undertakings easily have access to alternative shapes with equivalent functionality, so that there is no risk that the availability of the technical solution will be impaired. That solution may, in that case, be incorporated without difficulty by the competitors of the mark’s proprietor in shapes which do not have the same non-functional element as that contained in the proprietor’s shape and which are therefore neither identical nor similar to that shape.

(see paras 68-72)

5. The presumed perception of the sign by the average consumer is not a decisive element when applying the ground for refusal under Article 7(1)(e)(ii) of Regulation No 40/94 on the Community trade mark, but may, at most, be a relevant criterion of assessment for the competent authority when it identifies the essential characteristics of the sign.

(see para. 76)

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