IP case law Court of Justice

Exclusion of specific shapes

1.(e) signs which consist exclusively of:
- the shape which results from the nature of the goods themselves, or
- the shape of goods which is necessary to obtain a technical result, or
- the shape which gives substantial value to the goods;

1 pending referral

Referral C-21/18 (Textilis, 11 Jan 2018)


7 preliminary rulings

Judgment of 12 Jun 2018, C-163/16 (Louboutin and Christian Louboutin)

Article 3(1)(e)(iii) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that a sign consisting of a colour applied to the sole of a high-heeled shoe, such as that at issue in the main proceedings, does not consist exclusively of a ‘shape’, within the meaning of that provision.

Judgment of 16 Sep 2015, C-215/14 (Société des Produits Nestlé)

Article 3(1)(e) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as precluding registration as a trade mark of a sign consisting of the shape of goods where that shape contains three essential features, one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result, provided, however, that at least one of the grounds for refusal of registration set out in that provision is fully applicable to the shape at issue.

Article 3(1)(e)(ii) of Directive 2008/95, under which registration may be refused of signs consisting exclusively of the shape of goods which is necessary to obtain a technical result, must be interpreted as referring only to the manner in which the goods at issue function and it does not apply to the manner in which the goods are manufactured.

Judgment of 18 Sep 2014, C-205/13 (Hauck)

The first indent of Article 3(1)(e) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that the ground for refusal of registration set out in that provision may apply to a sign which consists exclusively of the shape of a product with one or more essential characteristics which are inherent to the generic function or functions of that product and which consumers may be looking for in the products of competitors.

The third indent of Article 3(1)(e) of Directive 89/104 must be interpreted as meaning that the ground for refusal of registration set out in that provision may apply to a sign which consists exclusively of the shape of a product with several characteristics each of which may give that product substantial value. The target public’s perception of the shape of that product is only one of the assessment criteria which may be used to determine whether that ground for refusal is applicable.

Article 3(1)(e) of Directive 89/104 must be interpreted as meaning that the grounds for refusal of registration set out in the first and third indents of that provision may not be applied in combination.

Judgment of 20 Sep 2007, C-371/06 (Benetton)

The third indent of Article 3(1)(e) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks is to be interpreted as meaning that the shape of a product which gives substantial value to that product cannot constitute a trade mark under Article 3(3) of that directive where, prior to the application for registration, it acquired attractiveness as a result of its recognition as a distinctive sign following advertising campaigns presenting the specific characteristics of the product in question.

Judgment of 12 Feb 2004, C-218/01 (Henkel)

For three-dimensional trade marks consisting of the packaging of goods which are packaged in trade for reasons linked to the very nature of the goods, the packing thereof must be assimilated to the shape of the goods, so that that packing may constitute the shape of the goods within the meaning of Article 3(1)(e) of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks and may, where appropriate, serve to designate characteristics of the packaged goods, including their quality, within the meaning of Article 3(1)(c) of that directive.

Judgment of 8 Apr 2003, C-53/01 (Linde)

When assessing the distinctiveness of a three-dimensional shape of product trade mark for the purposes of Article 3(1)(b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, a stricter test than that used for other types of trade mark must not be applied.

Independently of Article 3(1)(e) of First Directive 89/104, Article 3(1)(c) also has significance for three-dimensional shape of product trade marks. When examining the ground for refusing registration in Article 3(1)(c) of First Directive 89/104 in a concrete case, regard must be had to the public interest underlying that provision, which is that all three-dimensional shape of product trade marks which consist exclusively of signs or indications which may serve to designate the characteristics of the goods or service within the meaning of that provision should be freely available to all and, subject always to Article 3(3) of the Directive, cannot be registered. Rodríguez Iglesias Puissochet Schintgen Timmermans Gulmann Edward La Pergola Skouris Macken Cunha Rodrigues Rosas

Judgment of 18 Jun 2002, C-299/99 (Philips / Remington)

Article 3(1)(e), second indent, of Directive 89/104 must be interpreted to mean that a sign consisting exclusively of the shape of a product is unregistrable by virtue thereof if it is established that the essential functional features of that shape are attributable only to the technical result. Moreover, the ground for refusal or invalidity of registration imposed by that provision cannot be overcome by establishing that there are other shapes which allow the same technical result to be obtained.

6 appeals

Judgment of 13 Sep 2018, C-26/17 (Birkenstock Sales v EUIPO)


Judgment of 11 May 2017, C-421/15 (Yoshida Metal Industry v OHIM)


Judgment of 10 Nov 2016, C-30/15 (Simba Toys)


Order of 14 Apr 2016, C-452/15 (Best-Lock (Europe) v EUIPO)


Judgment of 6 Mar 2014, C-337/12 (Yoshida Metal Industry)


Judgment of 14 Sep 2010, C-48/09 (Lego Juris - Lego brick)



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