201612.19
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3D trademarks used alongside brand names

A recent application for revocation of a 3D European Union Trademark (EUTM) has provided some interesting insight into 3D trade marks in the EU.

A German company registered a 3D trademark for the shape of an oven in 2005. It appeared that the shape was, at the time of registration, distinctive. EUTMs are liable to cancellation for non-use if they are not put to genuine use in the community within 5 years following registration. When considering what constitutes genuine use, it is important that a mark serves the main function of a trade mark, which is to identify the source of goods. The mark need not necessarily be used in isolation – it can be used along with another sign – providing the distinctive character of the mark is not altered or compromised as a result.

In 2012, an individual filed a cancellation action for the 3D mark of the oven. One of the main arguments was that the mark was used in connection with a word mark for the brand, affixed to the front of the oven when it was sold, which compromised the 3D mark’s distinctiveness. In such a circumstances, it is necessary to consider the distinctiveness of both the registered mark in question (the 3D mark) and the mark joined in use (the brand affixed to the oven as sold). The cancellation action failed initially, because the General Court of the EU found that the shape of the oven was unusual and highly distinctive, despite the added use of a brand name. However, the Court also acknowledged that other manufacturers sold ovens with a similar shape but that the reason for that was the technical effect they were attempting to achieve was the heating of air by convection.

The Court of Justice of the European Union reversed the General Court’s decision primarily based on the reasoning in the above paragraph. Specifically, the CJEU commented that is was contradictory to state the shape was highly distinctive if there were other similar shapes on the market. The CJEU noted that the degree of distinctiveness of the registered mark (the 3D mark for the oven) was highly relevant when considering the impact of joined use with another mark (the brand). The CJEU then reversed the decision on the basis that the General Court’s misconceived reasoning of the distinctiveness of the 3D mark. The decreased distinctiveness of the 3D mark meant that the addition of the brand name had a more detrimental impact to the question of whether or not there had been genuine use.

If the shape of the oven was distinctive at the time of registration (and there were not similar shaped ovens on the market), then it may be that the proprietor’s failure to enforce its rights has resulted in the mark becoming more generic in the field in question and thus liable to cancellation.

If you have any questions on the above, please do not hesitate to contact the team at McDaniel & Co. on 0191 281 4000 or legal@mcdanielslaw.com.