IP case law Court of Justice

Judgment of 14 Mar 2019, C-21/18 (Textilis), ECLI:EU:C:2019:199.


14 March 2019 (*)

(Reference for a preliminary ruling — EU trade mark — Concept of ‘shape’ — Shape giving substantial value to the goods — Two-dimensional mark — Figurative mark also constituting a work for the purpose of copyright — Regulation (EC) No 207/2009 — Article 7(1)(e)(iii) — Regulation (EU) 2015/2424)

In Case C-21/18,

REQUEST for a preliminary ruling under Article 267 TFEU from the Svea hovrätt, Patent- och marknadsöverdomstolen (Svea Court of Appeal, Patents and Market Court of Appeal, Stockholm, Sweden), made by decision of 14 December 2017, received at the Court on 11 January 2018, in the proceedings

Textilis Ltd,

Ozgur Keskin


Svenskt Tenn AB,

THE COURT (Fifth Chamber),

composed of E. Regan, President of the Chamber, C. Lycourgos, E. Juhász (Rapporteur), M. Ilešič and I. Jarukaitis, Judges,

Advocate General: G. Pitruzzella,

Registrar: A. Calot Escobar,

having regard to the written procedure,

after considering the observations submitted on behalf of:

–        Svenskt Tenn AB, by B. Eliasson and M. Jerner, jur. kand.,

–        the European Commission, by É. Gippini Fournier, K. Simonsson, E. Ljung Rasmussen, J. Samnadda and G. Tolstoy, acting as Agents,

having decided, after hearing the Advocate General, to proceed to judgment without an Opinion,

gives the following


1        This request for a preliminary ruling concerns the interpretation of Article 7(1)(e)(iii) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark (OJ 2009 L 78, p. 1) and of that provision of Regulation No 207/2009, as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21) (‘Regulation No 207/2009 as amended’).

2        The request has been made in proceedings between, on the one hand, Textilis Ltd and Mr Keskin Ozgur and, on the other, Svenskt Tenn AB concerning the marketing by the applicants of goods for interior decoration which infringe the mark of which Svenskt Tenn is the proprietor.

 Legal context

 Regulation No 207/2009

3        Article 4 of Regulation No 207/2009, ‘Signs of which [an EU trade mark] may consist’, provides:

‘A[n EU] trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.’

4        Article 7 of that regulation, entitled ‘Absolute grounds for refusal’, provides, in paragraph 1(e) thereof:

‘The following shall not be registered:


(e)      signs which consist exclusively of:

(i)      the shape which results from the nature of the goods themselves;

(ii)      the shape of goods which is necessary to obtain a technical result;

(iii)      the shape which gives substantial value to the goods.’

 Regulation No 207/2009, as amended

5        Recital 12 of Regulation No 2015/2424, which amended Regulation No 207/2009, states:

‘In order to ensure legal certainty and full consistency with the principle of priority, under which a registered earlier trade mark takes precedence over later registered trade marks, it is necessary to provide that the enforcement of rights conferred by an EU trade mark should be without prejudice to the rights of proprietors acquired prior to the filing or priority date of the EU trade mark. ... ’

6        Article 7(1)(e) of Regulation No 207/2009, as amended, provides:

‘The following shall not be registered:


(e)      signs which consist exclusively of:

(i)      the shape, or another characteristic, which results from the nature of the goods themselves;

(ii)      the shape, or another characteristic, of goods which is necessary to obtain a technical result;

(iii)      the shape, or another characteristic, which gives substantial value to the goods.’

7        It is clear from Article 4 of Regulation 2015/2424 that that regulation entered into force on 23 March 2016.

 The dispute in the main proceedings and the questions referred for a preliminary ruling

8        Svenskt Tenn markets and sells furniture and furnishing fabrics and other decorative accessories.

9        During the 1930s, Svenskt Tenn started to work with the architect, Joseph Frank, who designed various patterns for furnishing fabrics for it, including a pattern called MANHATTAN, which it markets and sells and in respect of which Svenskt Tenn claims to be the holder of rights under copyright law.

10      On 4 January 2012, Svenskt Tenn filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO). That figurative mark, designated MANHATTAN, was registered under number 010540268.

11      The goods and services for which that mark has been registered are in Classes 11, 16, 20, 21, 24, 27 and 35 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to inter alia, lampshades (Class 11), table cloths, table napkins of paper; coasters of paper; wrapping paper; writing or drawing books (Class 16), furniture (Class 20), household or kitchen utensils and containers; brushes; glassware, porcelain and earthenware not included in other classes (Class 21), textiles and textile goods, not included in other classes; bed and table covers (Class 24), carpets; wall hangings (non-textile); wallpaper (Class 27), retail services connected with the sale of furniture, cushions, mirrors, wallpaper, carpets, lamps, textile fabrics, textile products, fancy goods, household and kitchen utensils and containers, tableware, glassware, porcelain, earthenware, candlesticks, paper napkins, bags, jewellery, books and magazines (Class 35).

12      The figurative mark MANHATTAN is represented as follows: