“TRADE DRESS” IN THE EUROPEAN UNION. Dealing with shapes and appearance

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“Trade dress” refers to the visual appearance of a product and/or its packaging as well as their ornamental features. In particular, protecting “trade dress” in the EU mainly consists of a combination of three tools: 3D trademarks, Designs and Copyright.

The most effective protection is provided by EU three-dimensional trademarks because, among other things, they are renewable for an unlimited period of time (every ten years), they protect a broader subject matter (the (legal) standards for likelihood of confusion, a typical issue in the trademark realm, apply). The subjective point of view to take into account when assessing similarity/invalidity is the “average consumer” rather than the “informed user” in the particular field of expertise concerned and there is no matter of “disclosure”/ “pre-publication” to be considered. Some of the most significant decisions on trademarks and designs shaping some basics in the EU of “trade dress” are summarized below.

Apple Inc. v. DPMA (C‑421/13) – TRADEMARKS

The matter addressed at the European Court of Justice level involved a sophisticated issue, namely, the “the presentation of the establishment” or the layout of Apple’s flagship store.

Apple Inc. was already the owner of a three-dimensional trademark granted by the USPTO. When the company sought an extension of protection in Europe, the DPMA (the German PTO) found that the trademark did not qualify as a source identifier, defining the sign no more and no less than a representation of the essentials of a store.

The ECJ ruled that ” […] a representation, such as that at issue in the main proceedings, which depicts the layout of a retail store by means of an integral collection of lines, curves and shapes, may constitute a trade mark provided that it is capable of distinguishing the products or services of one undertaking from those of other undertakings.”

Hauck v. Stokke (C-205/2013)

In Hauck GmbH & Co. KG v Stokke A/S and Others, the European Court of Justice provided crucial guidance for interpreting Art. 3(1)(e)(i) of Directive 2008/95/EC. In fact, this provision prohibits the registration, as a trademark, of signs consisting exclusively of shapes resulting from the nature of the goods.

In summary, despite the potential registrability of product shapes as trademarks, three-dimensional trademarks should be rejected also if the shape is not indispensable to the function of the goods. As a result, the decision has drastically increased the difficulties in overcoming the thresholds.

Christian Louboutin +1 v. van Haren Schoenen BV C-163/16

In spite of the strict interpretation, as seen particularly in the Stokke case , the newest developments in respect of three-dimensional trademarks are promising. In fact, in the “Louboutin” decision, the Court courageously went even beyond the uncompromising opinion of the CJEU Advocate General. In fact, the Court stated: […] while it is true that the shape of the product or of a part of the product plays a role in creating an outline for the colour, it cannot, however, be held that a sign consists of that shape in the case where the registration of the mark did not seek to protect that shape but sought solely to protect the application of a colour to a specific part of that product.”

DOCERAM GmbH v CeramTec GmbH C‑395/16 – DESIGNS

Despite the broader and more comprehensive trademark protection for “trade dress” in the EU, Designs offer a residual means for “trade dress” owners to protect the external appearance of their products in the European Union.

It is rare for the Court of Justice of the European Union to be entrusted with design cases. In fact, the percentage of trademark cases brought before the European Court of Justice drastically exceeds the amount of design cases it has decided. Therefore, unlike the above-mentioned decisions, which only focused on three-dimensional trademarks, a recent Court ruling has brought enormous attention to design practice in the European Union as a whole and in individual Member States.

Despite their limits in terms of narrow protection, design registrations in the EU are more accessible than three-dimensional trademark registrations. The main threshold applied is intended to prevent monopolies over technological innovation. In other words, obstacles to registration are raised when the need to fulfil a technical function is the sole factor determining the designers’ choice.

There is no clear statutory law explaining the terms “solely dictated by its technical function”. One issue is whether alternative options for achieving the same technical function might suffice to overcome the threshold. In C-395/16, Doceram v CeramTec, the Court gave a comprehensive explanation of what “solely dictated by its technical function,” means.

In the decision for invalidation at issue, the Court held that: “Article 8(1) of Regulation No 6/2002 excludes protection under the law on Community designs for features of appearance of a product where considerations other than the need for that product to fulfil its technical function, in particular those related to the visual aspect, have not played any role in the choice of those features, even if other designs fulfilling the same function exist.” In other words, “it must be established that the technical function is the only factor which determined those features, the existence of alternative designs not being decisive in that regard.”

CONCLUSION

In view of the foregoing, although it is extremely rewarding, it is also very challenging to protect, inter alia, shapes and three-dimensional features as EU trademarks. However, those seeking protection for signs whose appearance differs from the “typical” shape in a particular sector may yet find a basis for claiming distinctive character.

In addition to distinctiveness, having at least one “non strictly functional” element would enhance the likelihood of avoiding the “technical” objection, namely, “the shape, or another characteristic, of goods which is necessary to obtain a technical result”. Finally, three-dimensional signs for which registration is sought should not include a major “ornamental element” providing the goods with substantial value.