THREE DIMENSIONAL TRADE MARKS BEFORE COURT FILING DESIGNS AS TRADE MARKS: IS IT A SUCCESS STORY? Keith Hodkinson Marks & Clerk LLP, GB There are over 6,500 applications and over 200 registrations of 3D trade marks in OHIM. In Europe there are well over 600 reported cases of infringement, invalidity, cancellation and opposition between owners of three dimensional product marks (with or without figurative or verbal material) reported in Europe on the darts IP case database and even a couple on service marks. Some 100 or so reported cases on Darts-ip are pure 3D v 3D without additional elements. However taken without the wider range of marks these are not so interesting. I have only 30 minutes! Because of time constraints I am not going to examine the cases on defending the marks against an attack for invalidity. That excludes discussion of the recent Trianon Produktie BV v Revillon Chocolatier SAS (1) and Lindt & Sprungli AG v OHIM (2) validity cases and a number of other food shape cases currently under consideration.

In principle, you would have thought that the odds were stacked against the owners both in terms of validity and infringement, based on the views of the Court of Justice in Lindt & Sprungli AG v OHIM (2) on inherent registrability; and of the ECJ in Develey Holding GmbH v OHIM (3), para 80 (frequently cited in OHIM decisions), where the ECJ stated that “average consumers are not in the habit of making assumptions about the origins of products based on their shape or the shape of their packing in the absence of any graphic or word element”. However, in fact very few of the marks are successfully challenged for invalidity in the enforcement proceedings, at least for those marks registered after the Phillips v Remington(4) decisions clarified the absolute grounds issues. This was a surprise to me. It suggests that the IPOs are doing a good job in implementing the case law of the ECJ, or at least not letting marks through too easily (they could be making the absolute grounds criteria for registration too hard). Nevertheless this “Develey” principle is also frequently referred to in the infringement cases themselves to ensure a narrow scope of protection for pure shape marks. See for instance the Dutch case of Kraft Jacobs Suchard v Mars (5).

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In this case the Dutch court was very sceptical of market survey evidence, and was very quick to dismiss the claim of similarity arising from a single triangle shape chocolate bar compared with the rod shaped chocolate bar of the defendant. Outside the Netherlands courts in France and elsewhere have been much more willing to make this finding of confusing similarity. The English and German courts have been equally sceptical of expert and survey evidence. Furthermore the courts and indeed OHIM are very willing to interpret shape narrowly even where the owner has registered a shape in combination with another element, such as a label. A good example is Memphis Platinum Reemtsma v Austria Tabak (6) in the OHIM Board of Appeal where an attempt was made to rely on a cigarette packaging shape against another packet.

If plain packaging legislation comes to Europe as it has in Australia, such decisions could become of increasing importance. Despite this, these marks have had a pretty good record once they do get over the validity hurdle. The preponderance of cases brought have led to a finding of confusing similarity (by about 60% to 40%). There are wide national variations but the numbers of case per country are relatively few. We can divide the cases into a number of categories. So, the statistics show a relatively low success rate in initial registration on absolute grounds, a relatively high rate of contentious proceedings arising out of the successful registrations, and a better than 60% success rate in enforcement. Most cases are reported in France and Italy. Fewer cases, relative to the number of relevant registrations, appear in Germany and the UK. But what lies behind these numbers? I am going to break these enforcement cases down into different scenarios. They indicate how people are using their 3D trade marks and the outcomes. Please accept a large degree of generalisation as to the trends. I have also focussed on more recent cases since many were before issues of 3D trade mark registrability were considered at ECJ level. If I have missed out your favourite case, or one which counters the trend, I apologise. For convenience, irrespective of which law (national or CTMR) in what follows I am referring to legal provisions in the TM Directive 2008/95/EC equivalent to the local national provisions adopted pursuant to the Directive and the CTMR. Product v Product - Use against counterfeiting/lookalikes One often sees the case pleaded on both trade mark and unfair competition grounds and it is hard to find a case where, having won or lost on one ground a conflicting decision is taken on the other. Few owners are able to assert completely identical marks under Art 4(1)(a) of the Directive and plead confusing similarity under Art 4(1)(b) instead. However, many of the cases seem to conflate unfair competition and infringement issues.

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Take for example the Gucci v Hohl (7) case in the Court of Appeal in France where the same reasoning is applied to both causes of action. As a general comment I was struck by how many courts in some of the civil law countries I have surveyed do import other legal principles into their judgements which I would not see in the specialist trade mark courts of England and Wales or indeed Germany, where courts confine themselves to the wording of the legislation implementing the Directive and clearly separate different causes of action. This was a luxury goods case. Many of the cases are at the bottom end of the market, so to speak, where there has been most success in using shape marks against counterfeiters, though here the presence of small word mark elements helps. BIC have exploited this opportunity on a number of occasions. Equally many food shape cases have been successful against differently packaged but identically shaped foods. In BIC SA v Vetura (8), in France, BIC used their 3D registration effectively against a counterfeit Chinese pen. This case did involve a 3D TM which also had at least minimal textual matter BIC CRISTAL so you could argue that this was not (in Common law terms) essential to the decision, but an obiter dictum.

The court held that the textual material was not the determining element of the mark. It is not clear why BIC did not register a simple design of the pen without the BIC text but maybe they lacked confidence in its inherent distinctiveness. The absence of disclaimers under the current TM registration system adds ambiguity to registrations which may encourage this type of attack and in my view it is one of the worst aspects of the current system. BIC SA v Joja (9) shows another French court presented with the same CTM and finding for the claimant on the basis of the 3D mark but awarding additional damages for unfair competition through slavish imitation under the French Civil Code. Similar reasoning applied in BIC Iberia v Montichelvo (10) in the Spanish Supreme Court. Many cases involve designs whose design registrations have expired or which were not extended to the country in question. Obviously the scope of protection of a 3D registered or unregistered design is defined differently from that of a 3D trade mark. In particular the informed user under the Designs Directive must regard the overall impression as not materially different for a design; whereas the averagely circumspect consumer under the Trade Marks Directive must be confused by a similar sign on the same or similar goods for a trade mark or there must be unfair advantage taken of the repute or distinctive character of the earlier trade mark irrespective of the similarity of the goods or services. It is this latter head of infringement (under the Trade Marks Directive Art 4(1)(3)(a) for CTMs and Art 4(1)(3)(b) for national registrations) which really seems to offer the most possibilities in the free riding cases whereas confusion has been pleaded in the case of the slavish imitation or counterfeiting decisions.

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Furthermore because the trade mark is taken as a whole it is more difficult for the defendant to seek to rely on individual details as differentiation in the way we increasingly see in design infringement cases. Packaging marks against packaging in counterfeiting/lookalikes Many “perfume bottle” cases have succeeded here. See for example the various cases brought in various tribunals by Beauté Prestige International. This is perhaps the best example of a three dimensional shape as a trade mark, clearly indicating source not function, having the most fanciful designs and having no function at all in terms of external appearance or communicating messages about technical matters. They constitute the entirety of the packaging with little or no verbal elements. In this area the different infringement tests appear in theory at least to favour the TM owner over the design owners: see Beauté Prestige International v Coscentra (11) in the Netherlands which gives us a case where the claimant sued both for CTM and for Registered Design infringement of a Jean Paul Gautier La Femme brand bottle. Coscetra produced a “sensible lady” design of bottle, claimed to be a “lookalike”.

Here the test of imperfect recollection of consumers with little time to inspect what they were buying made it possible to find infringement in a case where the informed user might well easily distinguish the overall impression of the two designs. Because of their success in TMs, the claimants did not pursue the design infringement case Packaging v packaging against similar marks - not counterfeiting or lookalikes In the absence of a proven clear attempt to counterfeit, in relation to similar shapes the courts appear to be taking quite a narrow view of the scope of the registration. Take for example the case of Millennium v Koto Perfumes (12) in the TGI of Lyon in France for a Japanese doll design used as a perfume bottle.

Here the court found that the French TM registered in classes 2, 32 and 33 was not infringed by another Japanese doll perfume bottle. Merely to take the concept was not enough if the execution differed (another “shades of copyright case”?). However, this is a very odd case. Strangely, for a perfumier, the claimants did not file in class 3 and the evidence was that they only launched in the perfume market themselves after the defendant.

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Product v product marks - not counterfeiting or lookalikes There is an even more uncertain prospect for owners where the shape is the product itself as opposed to its packaging. A large number of jewellery and luxury Jane Birkin style bag cases and cases with distinctive clasps have failed under both confusing similarity and unfair advantage grounds. And, it seems, the bigger the object, the harder it is to win, even in France and Italy. A bold attempt was made in the Italian Court of Appeal decision in Daimler Chrysler v Nord Auto (13) which specifically contemplates the case where a rejection of a claim for infringement of a RCD does not preclude the finding of infringement of the same design as a CTM.

The Court correctly pointed out that the two rights - model and brand – perform different functions and have different scope of protection, considering the different targeted audiences, the average consumer for the brand versus the informed user for the design. In this case the Chinese Buble car, whilst not infringing the Smart car design registrations, was initially at first instance held to infringe the smart Car 3D TM registration because of its shape and two tone effect. Once again there is also an unfair competition claim. In the context of the unfair competition claim additional features, not present in the TM registration, such as the similarities in the interior design of the cars were taken into account. The appeal led to a finding for the defendant but, from what I can see, largely on procedural grounds. This is a little perplexing. It seems to me that the chances of the public being confused or of the design being taken as an indication of source are remote, particularly given the care applied to the purchase of such big ticket items as cars and especially in car obsessed Italy! Compare the Kenwood food mixer cases in France and in UK both of which involved high quality and expensive products and an equally high quality and expensive competitor product. In the English Court of Appeal case (14) Kitchen Aid sued Kenwood for infringement under Article 4(1)(3) by taking unfair advantage of the distinctive character (not repute) of the Kitchen Aid product. Note the significance of the extra word in the design as registered as a TM. KitchenAid had failed to get a registration for the shape alone and had then filed for the shape with the word KitchenAid applied to it. They nevertheless sued Kenwood for use of a design which carried prominently Kenwood’s own trade mark with nothing similar to the Kitchen Aid logo.

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The English Court of Appeal noted that the CTM registration was not limited by colour and so colour was disregarded in considering any infringement. This is I think something which would not necessarily be found in a simple unfair competition action and may be a good reason for pleading a TM infringement even if you think that an unfair competition action may be possible, since we are able to compare a theoretical product with the defendant’s product in the market, not merely the claimant’s actual products and trade. The issues were Firstly, whether the mark registered was distinctive (presumed to be so of course, but on what basis: the shape or the word?). Unfortunately, for some reason there was no challenge to validity of the registration in this case, even though the first instance judge had expressed reservations about it and it was presumed valid under Art 95 CTMR. Secondly, was the defendant’s product sufficiently similar to make the necessary link in the mind of the consumer with the registered mark, applying the Adidas v Marca Mode II Case (15); if so, was it taking unfair advantage of the distinctive character or repute of the CTM causing detriment to that distinctive character or repute. The Court of Appeal held that for the purposes of Article 4(1)(b) the mark was sufficiently similar in that it called to mind the claimant’s trade mark but that Kenwood’s product was a premium priced product targeting design conscious consumers; they were badging it as theirs, trying to build their own reputation, not in any way seeking to piggy back on the success of the KitchenAid product, each had its own virtues; this was not taking unfair advantage. The corresponding French litigation (16) reached exactly the same conclusion.

My conclusion from the Kenwood and the “bags” and “clasps” cases is that where the defendant is not trying to transfer the image of the claimant’s mark to itself, but simply to provide a competing similar design, the courts are not finding confusion or unfair advantage and in the absence of a design registration infringement the claimant is not going to win. Instead the 3D mark cases are being used as a statutory basis for an unfair competition or counterfeiting claims. Referring again to Gucci v Grohl (7) the French Court of Appeal rather interestingly states that “the grant of the CTM …. cannot allow Gucci to rely on its trade marks to claim a monopoly of use which would undermine both the freedom of expression for creators and in the freedom of trade and industry in a horse bit shape.”

I am not sure which provision of the CTMR or other legislation that reasoning is based on. The more complex and high end the product the harder it is to use the 3D trade marks designs to achieve this result, not least because of the greater attention to detail of the consumer in the premium area.

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Finally when it comes to furniture and the Stokke case (17), you really are fighting an up hill battle. German and UK courts in particular have not given protection to most furniture designs under copyright and have been unhelpful in trade mark cases. [I am told that such cases have in fact succeeded in Denmark, where indeed the Danish courts appear to have been very favourable to Danish design claimants and where pressure for favourable legislation – see the “Lego” principle in the Designs directive – has been consistent over the years]. Unfair advantage v unfair competition There has been a tendency, as I mentioned at the outset, for cases to be pleaded as both taking unfair advantage and as unfair competition. The courts have found both on the same facts. However there are limits. The case of Lego Juris v TKS (18) in Belgium involved a claim that the TKS infringed both CTM 4938635 and 7453657 in the 3D “Lego” building bricks and committed acts of unfair competition in relation use of the "Lego” building brick design on products other than toys. The Lego brick CTM had been cancelled for toys in class 28 on the basis of technical character but remained in force for non toy products like jewellery etc in class 14 and furniture in class 20 where it had decorative effect. It was for use on “furniture” that Lego sued TKS. The building block designs were used as display bases in shop windows for luxury watches.

TKS ran an interesting defence – we were not using the shape as a trade mark - to distinguish the source of our goods - but for other purposes, i.e. to sell watches of other people by displaying them efficiently in a window space. This argument does not seem to have been fully analysed by the court. However, this was not necessary since the court found that there was no trade mark infringement under Article 4(1)(b) because consumers did not think that the “furniture” came from Lego, so there was no confusion (tricky though to see that these were similar not identical marks). Was there nevertheless unfair advantage here under Article 4(1)(3)? Lego pleaded in addition to TM infringement, a breach of Article 86 LPMPC, the Benelux unfair competition law, which prevents unfair business practices against consumers and Art 84, Art 85 relating to unfair acts against competitors. They won on this front though losing on the TM infringement case. So the Article 4(1)(3) leg is not entirely on all fours with an unfair competition case. Equally it should be said there have often been cases in the common law countries where a registered trade mark action has failed even under unfair advantage but a passing off action has succeeded and a good example of this in the context of shape marks is an opposition proceeding in the UK IPO on a training shoe combined shape and device, Adidas v Inlima (19). Other examples include three dimensional tree shaped air fresheners.

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Registration of a pure shape and enforcement against a shape and figurative or word mark I mentioned earlier that the BIC cases included some small verbal element. The real value of registering the 3D design as if it were a pure shape design when it comes to infringement can be seen in the RED ARMY case before OHIM, High Point Group Inc v Znaky (20).

This was an opposition case before OHIM but of course the test is effectively the same as for infringement. Here the bullet 3D TM registration used to oppose the RED ARMY bullets had no decorative elements or colour at all. In comparing the marks the OHIM effectively disregarded the colour and text of the later mark and took the view that consumers would regard them as conceptually identical, then taking into account the visual coincidence and conceptual identity (irrespective of the languages of the consumer) it was considered that these signs were similar as well. The earlier mark was registered in 1997 and granted 1998. This opposition was filed in respect of an application in 2010. Despite this there was no opportunity taken by the defendant of the opposition proceedings to demand proof of use of the earlier 3D mark and no issue raised as to whether use for the bullet mark with additional decorative material would count as use of the plain shape mark. i.e. whether the placing of additional material rendered the mark sufficiently different for it to avoid a finding of similarity. In fact the product as actually sold in the US looks like the contested application; but, this being said, the corresponding US registration for the plain bullet design does have a section 15 affidavit of use lodged with the USPTO. When it came to a risk of confusion, the OHIM noted that the use of a bullet shape in relation to drinks was a creative and fanciful combination. In addition the earlier mark did not have any text that could be used to refer to it and help differentiate it from the later mark. So where, as here, the protection for the earlier mark is granted for the shape which is almost entirely reproduced by the later mark the additional text figurative and colours of the latter are not enough to counteract such coincidence in the case at hand, despite the principle in Develey Holding v OHIM (3) referred to above. Scope of protection – technical features Few successful attempts have been made protect purely technical features or functional designs. These have a number of exclusions and defences under designs law and the only reported trade mark cases are not encouraging – rightly so. As one example see the Dutch case of Wieland Electric v Ratio Electric (21) for a registered mark for a shape of electric plug. However there are some quite technically restrained design cases in earlier years in favour of Nestle coffee capsules which I think are probably now of doubtful value. Scope of protection – use against different goods Given the nature of shape marks, enforcement against different goods must be considered unusual. The evidence can rarely be that the mark is confusingly similar for goods other than the actual product.

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Where the mark is packaging then I suppose there is an argument that it could be a confusingly similar mark. However if you look at the Rubik cube case, why not?

See for example Hofinger & Goffriller v Meggle (22) (Sausages v butter) where the claimant failed;

See also Duracell v Kaufland Ceska Republika (23) (batteries v drinks) where again the claimant failed.

In many of these cases we should be looking at unfair advantage rather than confusion as the basis for the trade mark infringement attack but the challenge is quite is tough one.

Use of a 3D TM registration as a basis for preventing use or challenging a later design registration. One reason for getting a design registration is speed. A validity challenge based on an earlier 3D trade mark registration can be a quick and cheap indirect attack on use, challenging via the OHIM cancellation division instead of in a national court, provided that you are not looking for injunctive relief. Probably rather well known, but still slightly unusual, is the follow up dispute after its CFI reference in Ningbo Beifa Group v Schwan Stabilo (24), where one ground of invalidity pleaded against the Ningbo Beifa RCD was an earlier German 3D TM 2911311 dated 1995 for pens, as well as some 2D marks showing pictures of the pens. No distinctiveness through use was claimed. The question was whether the 3D mark gave the owner the right to prevent use of the Beifa design. Article 25(1)(e) of the CDR requires that to succeed use be made of the distinctive sign in the RCD impugned. However, no proof of use was required here, because it had not been requested in time. The public must form the impression that use will be made of the sign in the design. The OHIM cancellation division found it did. Because the prior trade mark was a German trademark, the governing law was German law - para 14(2)(2) of the German Designs law, substantially harmonised with Art 25(1)(e) of the Community Design Regulation. This makes the use for which the articles represented in the design are to be used critical – whereas the RCD applied for covers all articles to which the design might be applied, we have to guess what articles they will actually be used at and then ask if that use would be prohibited by the CTM or German TM relied upon.

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The OHIM found a likelihood of confusion between the design and the earlier TM– even a low degree of distinctiveness would not suffice to exclude a likelihood of confusion – and therefore declared the design invalid and by implication of course found that Stabilo would succeed in an infringement action brought in Germany if Beifa sought to market their pen there. Incidentally, just as in the BIC cases in France, in Ningbo Beifa v Stabilo, the OHIM disregarded the relative small amount of decorative material on the Stabilo pens but often of course the designs do carry quite a lot of two dimensional material. I might finally mention that 3D marks can apply to services too: the English case of Direct Line insurance v eSure Insurance (25) concerning two similar models used in advertising campaigns led to a finding in favour of one TV advertisement computer mouse over another.

Conclusions There are arguably insufficient cases for the results so far to be statistically meaningful, especially in the light of changing case law on inherent distinctiveness of such marks. However, so far, in summary – 3D packaging marks fare generally better than 3D product marks, in the absence of counterfeiting, with the possible exception of food products where the shape is completely non technical and even if there is additional packaging around the item; the scope of protection accorded is narrow; similar goods arguments rarely win; registrations are often upheld on the basis of unfair advantage infringement alongside unfair competition even though the tests are different; counterfeits suffer under any system; the more expensive and certainly the larger the goods the less chance of success in the absence of counterfeits. For so long as the courts continue to take a very narrow view of designs, especially those which are evolutionary not revolutionary, there will be a temptation to use the trade mark system as an additional tool in the toolkit. The consumer confusion test is generally viewed as broader than the “not substantially different” material impression test applied in the case of many of the designs, though why? In my case when I look at as design I know perfectly well that they are not from the same source but I think one is a copy of another and riding on its back – it is almost a dilution infringement, the widest type of trade mark registration protection you can get. Maybe I am an over informed user. The absence of a fully harmonised copyright law and the much lower protection protection given in the UK and Germany and one or two other countries compared with France and Italy means that this alternative is largely eliminated in these jurisdictions, and in these countries one might expect to seem trade mark infringement brought more often. However on the evidence of the case law the English and German courts at least are just as sceptical of the trade mark registration as they are of the designs whilst courts in Italy and France seem just as favourable, at least in cases where the design is substantially the whole of the product’s packaging or the product itself. So, how big can 3D marks grow?

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Logically there is no barrier to the growth of aesthetically pleasing, non functional shapes as trade marks, other than the validity test of whether the design performs the essential function of being an indication of source. Whilst at first sight the registration of the shape of a car as a trade mark is disconcerting, it is in principle no different to a perfume bottle. There seems to be a greater willingness on the facts to attribute indication of source to a design in Italy and France than elsewhere (including OHIM) but the law being applied is summarised in the same way. The second cause of divergence within the Community will arise in the area of enforcement where to judge by the case law so far, anything short of slavish imitation is going to be relatively safe from infringement; and the larger and more expensive the object, the more difficult the reasonably circumspect consumer test becomes for the claimant to satisfy.

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Case References No 1

Case name Trianon Produktie BV v Revillon Chocolatier SAS GC CFI

Report/darts-ip ref C-2/12

2

Chocoladefabriken Lindt & Sprüngli AG v OHIM CJEU

C-98/11

4

Develey Holding GmbH v OHIM ECJ

C-238/06, para 80

3

Phillips Electronics v Remington Consumer Products ECJ

C-299-99

5

Kraft Jacobs Suchard v Mars Hague NL

nl-08-03362-hr-b

6

Memphis Platinum Reemtsma v Austria Tabak BoA OHIM

R0182/2005-4

7

Gucci v Hohl Court of Appeal FR

fr-10-07007

8

BIC SA v Vetura SAS TGI Paris FR

fr-08-02826

9

BIC SA v Joja TGI Paris FR

fr-09-00365

10

BIC Iberia v Montichelvo Industria Supreme Court ES

es-ts-2770-2003

11

Beauté Prestige International (BPI) v Coscentra Hague NL

nl-ha-za-08-434-b

12

Millennium v Koto Perfumes TGI Lyon FR

fr-11-01958

13

Daimler Chrysler v Nord Auto Court of Appeal Torino IT

it-tor-36583-07

14

Kitchenaid Europa v De Longhi France TGI Paris FR

M20200282

15

ADIDAS v Marca Mode II ECJ

Case C-102/07

16

Whirlpool v Kenwood Court of Appeal (England & Wales) GB

[2011] ETMR 7

17

Stokke v Anon OLG Frankfurt DE

de-11 U 25 07

18

LegoJuris v TKS Brussels Court BX

be-10479-2010

19

Adidas v Inlima GB

Uk-ipo-o-188-89

20

High Point Group Inc v Znaky OHIM

opp B1806416

21

Wieland Electric v Ratio Electric NL

Nl-am-0.00 1212-395

22

Hofinger & Goffriller v Meggle OHIM

opp B001353087

23

Duracell v Kaufland Ceska Republika Court of Appeal CZ

cz-O-463319

24

Ningbo Beifa Group v Schwan Stabilo BoA OHIM

R 1838/2010-3

25

Direct Line Insurance v Esure Insurance CofAppeal (E&W) GB

[2008] ETMR 77

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