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Design as a trademark
How to obtain the most favourable protection for the shape of a product or
its packaging: Similarities and differences between an EU registered three-
dimensional trademark and a community registered design
Kandidatnummer: 722
Leveringsfrist: 25. november 2016
Antall ord: 16 827

Innholdsfortegnelse
1 INTRODUCTION .......................................................................................................... 1
1.1 Thesis theme and legal issue ............................................................................................ 1
1.2 Overview .......................................................................................................................... 2
1.3 Definition of terms ........................................................................................................... 2
1.4 Source of law ................................................................................................................... 3
2 THE EU-SYSTEM FOR THE PROTECTION OF THREE-DIMENSIONAL

SHAPES AS A TRADEMARK. ................................................................................... 5
2.1 Conditions for obtaining protection ................................................................................. 5
2.1.1 Distinctiveness .................................................................................................... 5
2.1.2 Descriptiveness ................................................................................................. 10
2.1.3 Grounds for refusal under art. 7 (1) (e) ............................................................ 10
2.2 Examination of shape marks .......................................................................................... 16
3 THE EU-SYSTEM FOR THE PROTECTION OF DESIGN ................................. 17

3.1 Conditions for obtaining protection ............................................................................... 17
3.1.1 Novelty ............................................................................................................. 17
3.1.2 Individual character .......................................................................................... 18
3.1.3 Technical function exclusion ............................................................................ 18
3.2 The multiplicity of forms theory .................................................................................... 19
3.2.1 Visibility and complex products ....................................................................... 21
3.3 Examination of designs .................................................................................................. 22
4 INVALIDITY DUE TO CONFLICT BETWEEN A EU TRADEMARK AND A

COMMUNITY DESIGN ............................................................................................. 22
4.1 Source of law and the relevant public’s perception ....................................................... 22
4.2 Invalidity of a Registered Community Design based on likelihood of confusion with an
earlier Three-dimensional EU trademark ....................................................................... 24
5 SIMILARITIES AND DIFFERENCES BETWEEN DESIGNS AND THREE-

DIMENSIONAL TRADEMARKS ............................................................................. 25
5.1 Similarities and differences with reference to the application process .......................... 25
5.1.1 The application process .................................................................................... 25
5.2 Similarities and differences with reference to the scope of protection .......................... 28
5.2.1 Overview .......................................................................................................... 28
5.2.2 The overall impression ..................................................................................... 29
i
5.2.3 Scope of protection of designs.......................................................................... 32
5.2.4 Scope of protection of trademarks .................................................................... 35
5.2.5 Conclusions on the scope of protection of designs and three-dimensional
trademarks ........................................................................................................ 37
6 ADVANTAGES AND DISADVANTAGES OF THREE-DIMENSIONAL EU

TRADEMARKS AND COMMUNITY REGISTERED DESIGNS ........................ 39
6.1 Duration of protection .................................................................................................... 39
6.2 Opposition period ........................................................................................................... 39
6.3 The requirements for obtaining protection..................................................................... 40
6.3.1 Exceptions on the exclusive rights of designs .................................................. 40
6.4 Would-be three-dimensional trademarks ....................................................................... 41
7 CONCLUSION: WHAT PROTECTION SHOULD BE CHOSEN?...................... 42
8 REFERENCES ............................................................................................................. 45
8.1 EU-legislation ................................................................................................................ 45
8.2 Table of cases: ................................................................................................................ 46
8.2.1 Court of Justice practice ................................................................................... 46
8.2.2 Opinions, Court of Justice ................................................................................ 47
8.2.3 General Court practice ...................................................................................... 47
8.2.4 Boards of Appeal practice ................................................................................ 48
8.2.5 EUIPO registrations .......................................................................................... 48
8.2.6 Practice from other EU-states ........................................................................... 48
8.3 Books ............................................................................................................................. 49
8.4 Reports ........................................................................................................................... 49
8.5 Articles ........................................................................................................................... 49
8.6 Internet resources ........................................................................................................... 51
ii
1 Introduction
1.1 Thesis theme and legal issue
There are several routes one can take in order to obtain legal protection for a design consisting
of the shape of a product or its packaging. The technical functions of the design may be pro-
tected by a registered patent, provided that the patentability requirements are fulfilled. Further,
the design of a product may be protected under copyright law, provided that the shape is suffi-
ciently original, and not merely functional. Finally, the design of a product or its packaging may
be protected under design- and/or trademark law, given that the requirements set forth in the
applicable statutory law are fulfilled.
There is currently no existing EU-law, or any other international law providing explicit guid-
ance as to what legal protection should be chosen for a shape. Guidance on how the different
systems protecting IP rights are meant to coexist and overlap must be found in the relevant
statutory law and practice from the courts. In this thesis, the aim is to examine the differences
and similarities between registered rights pertaining to the visual appearance of a product or its
packaging. Hence, the focus is on the similarities and differences between community trade-
marks and designs with reference to both the necessary requirements for obtaining a registra-
tion, and the scope of protection conferred under the two different registrations.
That a difference between the systems is intended, is made evident by the different objectives.1
Design protection is granted for the visual appearance of a product, because aesthetically at-
tractive products add commercial value.2 Further, protecting designs that are “new” and “indi-
vidual”3 encourages “innovation and development of new products and investment in their pro-
duction”4. For these reasons the designer should enjoy a time-limited exclusive right to the
design. Trademark protection is only conferred if the shape is distinctive enough to function as
a badge of origin,5 meaning that they, in the words of the trademark Regulation; “are capable
of distinguishing the goods or services of one undertaking from those of other undertakings.”6
Because of these different objectives, at first glance, designs and trademarks may seem inher-
ently different in nature. However, there are several similarities between the two institutions.
1
WIPO, Standing committee on the law of Trademarks, Industrial Designs and Geographical Indications
(2002), Annex, p. 17
2
I.c. p. 17
3
CDR art. 5 and art. 6
4
CDR recital 7
5
Hartwig (2010) p. 20
6
EUTMR art. 4
1
First of all, the fact that the same shape can be registered as both a design and trademark. Sec-
ond, that there is nothing in the applicable statutory law which prevents the two registrations
from co-existing7. With this in mind, my aim is to seek guidance on what protection should be
chosen for the shape of a product or its packaging, and whether or not there are situations where
the shape should be registered as both a design and a trademark.
1.2 Overview
The starting point of this thesis is that the shape of goods and its packaging is protectable as
both a trademark and a design. I will consider the question of the differences and similarities
between designs and trademarks in three parts. First, the differences and similarities with regard
to the requirements for obtaining protection. Second, the similarities and differences with re-
gard to the application process. Third, the similarities and differences in the scope of protection
offered by the two different registrations.
The first part will provide a general overview of the requirements set forth in EU-law for ob-
taining a registration for a shape, cf. section 2 and 3. The aim is further to assess how the two
systems function within the EU, by examining the practice of the courts of the European Union
and the EUIPO, the European registration office with regard to the requirements for protection.
The requirements for obtaining protection of a shape may offer some guidance as to what sys-
tem is the appropriate one. When applicable, the exclusions from protection in trademark- and
design law will be compared.
The second part will provide an overview of the similarities and differences with reference to
the application process and the scope of protection conferred by a registration of a three-dimen-
sional trademark. As there is no EU-law or practice comparing the scope of protection between
trademarks and designs, I will attempt to discern the relative scope of protection conferred un-
der the two rights separately by looking at the practice in infringement-cases of three-dimen-
sional trademarks and designs respectively. This will result in a comparison of the scope of
protection, cf. section 5.
In the final part of the thesis, based on the findings of the thesis, cf. section 7, the aim is to offer
a conclusion to the question of what protection should be chosen in any given case, and to
whether or not both forms of protection should be elected.
1.3 Definition of terms

This thesis will focus on the EU registration system. The registration of an EU trademark or
community design is valid in the entire EU. Both EU trademarks and designs are registered by
7
Derclaye and Leistner (2011) p. 69
2
the EUIPO (European Union Intellectual Property Office), which previously was called OHIM
(the Office for Harmonization in the Internal Market). The two names will be referred to alter-
nately, depending on the name of the institution at the time the decision was made. Registered
trademarks were under OHIM called Community Trademarks (CTM’s), but are now referred
to as EU Trademarks (EUTM)8. Similarly, the Trademark Regulation in the EU previously
known as the Community Trade Mark Regulation (CTMR) is now called the European Union
Trade Mark Regulation (hereafter EUTMR). Strangely enough, registered designs were not
subjected to a similar change of names, and are still called Registered Community Designs
(hereafter RCD), whereas the applicable EU regulation on designs is still called the Community
Design Regulation (hereafter CDR).
Any additional terms will be defined consecutively throughout the thesis.
1.4 Source of law

Within the European Union, trademark and/or design protection may be obtained through sev-
eral different routes.
A design- or trademark application may be filed to a national registration office in the country
where the shape in question is or will be used. The granted trademark- or design registration
will consequently be valid in that country, but only in that country. The rules concerning na-
tional registration in the EU are similar, however not identical in all the EU-countries, as they
have been subjected to harmonization acts within the community9; mainly referencing the De-
sign- and Trademarks Directive10. Yet, from this it does not entail that the result of the exami-
nation must be similar in any particular case11. In other words, even if a mark that is granted
registration in one member state, it may still be refused in another member state.
If the shape is to be used in more than one EU-country, the application can be filed to the
EUIPO- since a registration granted by EUIPO renders the registration valid in the entire Euro-
pean Union. The applicable statutory law concerning designs is the Design Regulation (CDR)12,
and for trademarks the Trademarks Regulation (EUTMR)13. It should be noted that the EUTMR
was amended by Regulation 2015/2424 which entered into force on 23 March 2016. However,
8
EUIPO (2016)
9
Wilkof and Basheer (2012) p. 262-263
10
Directive 98/71/EC on the legal protection of designs and Directive 2008/95/EC to approximate the laws of
the Member states relating to trade marks
11
C-363/99, Postkantoor, paragraph 44
12
(EC) No 6/2002
13
(EC) No 207/2009
3
some of the amendments to the EUTMR will not come into effect until 1 October 2017.14 One
such change is that, the graphical representation requirement for applications will be removed.
The relevant amendments to the EUTMR will be discussed consecutively throughout the thesis.
If the shape is to be used in countries throughout the world, applications for trademarks and
industrial designs may be sent using the international system administered by WIPO. However,
WIPO does not examine the applications themselves. Applications are examined pursuant to
national law15. Thus, this system will not be discussed any further. Industrial designs are fea-
tures of “ordinary” industrial articles.16 As such, industrial designs are thus relevant for the
purpose of this thesis.
This thesis will focus on the law and practice which governs EU-applications for designs and
trademarks, the rules set forth in the EUTMR and CDR. The relevant practice for the thesis is
that of the Court of Justice of European Union and the Boards of Appeal. Decisions on EU
trademarks and designs from EUIPO are submitted to appeal to the Boards of Appeal (BoA).17
The BoA is completely independent from EUIPO18. Decisions from the Boards of Appeal may
in turn be subject to an appeal to the General Court and then appealed to the Court of Justice.
Thus, the decisions from the Court of Justice, have the greatest bearing compared to the General
Court and Board of Appeal.
Further, the Court of Justice gives preliminary rulings19 and decide on infringement proceedings
against national governments. In the preliminary rulings the national courts ask the Court for
clarification on the interpretation of EU-law.20 Hence, also practice from the Court regarding
the design- and trademark directives is relevant where the subject matter of the provisions are
the same.
In some cases, where there are few decisions from the judicial organs of the European Union, I
will offer some examples from national courts of EU-countries. It should be noted that these
decisions are not binding for the EUIPO21, or any of the courts, and cannot be afforded much
14
EUIPO (2016). Similar amendments have been made to the trademark Directive.
15
Bøggild and Staunstrup (2015), p. 25
16
Russel-Clarke and Howe (2005) p. 6
17
EUIPO (2015)
18
Bøggild and Staunstrup (2015) p. 56
19
The cases where there is no letter P after the year. See Thorning and Finnanger (2010) p. 312
20
Europa.eu (2016)
21
4
weight when interpreting EU law. However, examples may offer some guidance as to how the
case-law developed by the EU-courts is applied to national law22.
2 The EU-system for the protection of three-dimensional

shapes as a trademark.
For the purpose of discerning the similarities and differences between the EUTM and RCD with
regards to shapes, it is necessary to start by outlining the requirements for obtaining a registra-
tion within the two systems. Article 4 in EUTMR stipulates that a trademark can be “(…) any
signs capable of being represented graphically, including (…) the shape of goods or of their
packaging”. From this, it follows that any three-dimensional shapes, including containers, pack-
aging and the product itself may obtain registration, as long as they are “capable of distinguish-
ing the goods or services of one undertaking from those of other undertakings”. In other words,
a shape may be registered as a trademark as long as they are not “devoid of any distinctive
character”, cf. EUTMR art 7 (b). Article 7 (e) of EUTMR stipulates three additional and abso-
lute grounds for refusal that apply only to shape marks and must always be considered. Signs
that are barred from protection are those that consist exclusively of shape due to of the nature
of the goods, are necessary to obtain a technical result, or give substantial value to the goods.23
All of the grounds for refusal set forth in article 7(1) must always be “interpreted in the light of
the public interest underlying each of them”.24
2.1 Conditions for obtaining protection

2.1.1 Distinctiveness
The requirement of “distinctiveness” in EUTMR art. 7 (1) (b) entails that the mark fulfil its
essential function of being “capable of distinguishing the goods or services from one undertak-
ing from those of other undertakings.”25 According to the Court of Justice this means that the
mark must “guarantee the identity of the origin of the marked product or service to the con-
sumer”26. The distinctive character must be assessed first by reference to the goods and/or ser-
22
23
Max Planck institute (2011). The report on “the overall functioning of the European Trade Mark System”
was commissioned by the European Commission to provide an in depth-study on the European trademark in
order for the Commision to propose amendments to the legislation. See page 1 of the report.
24
Joined cases C108/97 and C-109/97, paragraphs 25 to 27
25
EUTMR art. 4
26
For example, C-37/03, BioID, paragraph 60
5
vices for which registration is sought, and second, by reference to the relevant public’s percep-
tion.27 The relevant consumer is defined as a hypothetical “average consumer” who is “reason-
ably well-informed and circumspect”28. The average consumer should be able to distinguish the
mark from that of other undertakings “without conducting an analytical or comparative exami-
nation and without paying particular attention”.29 Marks that do not fulfil this essential function
are hence considered devoid of distinctive character30.
A shape mark should be assessed using the same criteria for assessing the distinctive character
as other types of marks, according to established Court of Justice case law31. It is, nonetheless
an established practice that the average consumer’s perception is not necessarily the same with
regards to shape marks as it is for other types of marks. According to the Court of Justice, the
average consumer is not used to “making assumptions about the origin of products on the basis
of their shape or the shape of their packaging in the absence of any graphic or word element”32
It may therefore be more difficult to establish distinctiveness in relation to a shape, compared
to the a word mark.
The distinctiveness of a three-dimensional trademark must be assessed by considering the mark

as a whole, as the average consumer “does not proceed to analyse its various details”.33 Thus
the Court has stated that it is only marks which “departs significantly” from the norm or customs
of the sector that should be considered distinctive34. In other words, a mark consisting of the
shape of a product or its packaging must be compared to how similar products or packaging are
usually constructed when used for the same goods or services, Only if the mark as a whole
departs significantly from this norm, with reference to the average consumer, may it be consid-
ered distinctive. This again renders the bar for distinctiveness of a three-dimensional mark quite
high. It should be noted that this standard also applies to any two-dimensional mark that depic-
ture a graphic representation of a three-dimensional shape, such as the outlining of a store35.
These two-dimensional marks are considered distinctive using the same criteria applied to
three-dimensional marks36. The design is considered in order to determine distinctiveness
27
Joined cases C-344/10 P and C345/10 P, Frexinet, paragraph 42
28
C-342/97, Lloyd Schuhfabrik Meyer paragraph 26
29
C-218/01, Henkel, paragraph 53
30
C-329/02, SAT.1, paragraph 23
31
See for example joined cases C-456/01 P and C457/01 P, Henkel v OHIM, paragraph 38.
32
See for example C-218/01, Henkel, paragraph 52
33
C-136/02 P, Maglite, paragraph 20
34
C-218/01, Henkel, paragraph 39
35
C-421/13, Apple. The mark in question consisted of a two-dimensional representation of a retail store.
36
See for example T-30/00 paragraph 49
6
One of the relevant factors for determining a marks inherent distinctiveness is to consider
whether or not the trademark has a sufficient number of design features to fulfil the function of
designating its commercial origin.37 An unusual design is an element that might cause the mark
to depart significantly from the norm or customs in the sector.
One of the first cases before the General Court where this issue was raised, and the mark was
considered distinctive was in relation to the two- dimensional design of a car grille.38 The con-
tested mark is shown below39:
The question before the Court was whether or not the mark was inherently distinctive with
regards to CTMR art. 7 (1) (b) of the Regulation. The mark is a 2D-mark, but the two-
dimensional representation of a shape is considered in the same way as a 3D-mark, as
mentioned above.
The Court first noted that grilles had become essential to the look of vehicles, and further, they
were percieved by the average consumer as a means of differentiating between existing models
on the market made by various manufacturers.40 The Court deduced that the features of a grille
may help the consumer identifying “the model or range, or even all vehicles made by the same
vihecle manufacturer”.41 The Court concluded that the Board of Appeal was wrong in
considering the mark devoid of any distinctive character, and instead determined that the mark
had to be registered, because the shape of the grille, had an unusual grille design, at the time
when the application was filed.42
Another case from the General Court relating to a three-dimensional mark is T-305/02, Nestlé
Waters France v OHIM. The applicant, Nestlé appealed a refusal of registration from OHIM
for the mark shown below, the shape of a bottle:
37
C-173/04, SiSi-Werke, paragraph 47
38
T-128/01, DaimlerChrystler Corporation v OHIM.
39
EUTM no. 525048
40
T-128/01, DaimlerChrystler Corporation v OHIM, paragraph 42
41
I.c. paragraph 44
42
I.c. paragraph 46-50
7
This is one of relatively few cases where a 3D-mark has been accepted in the EU solely based
on an inherent distinctiveness of the mark. The applicant Nestlé argued that OHIM and the
Board of Appeal were too strict in their assessment of distinctiveness, and hence, that their
assessment rendered “bare bottles being denied any protection under trademark law.”43 The
case concerned the shape of the packaging of the product, not the shape of the product itself.
The mark is currently registered for all non-alcoholic beverages in Nice-class 32.44
The Court began by assessing the difference between the shape of a product and the packaging
of that product. The Court stated that the Board of Appeal was not wrong in considering the
distinctiveness in relation to a container for the goods in question, as these cannot, on account
of their nature, be sold without packaging.45 The relevant public, the average consumer, is in
the case of bottles “quite capable of perceiving the shape of the packaging of the goods con-
cerned as an indication of their commercial origin”46. This shows that the average consumer is
considered to have a higher degree of attention to some goods compared to the standard level
of attention as outlined above.47
The Court then concluded that “the nearly cylindrical main section of the bottle bears oblique
grooves which, first, completely cover the bobbin-like part of the bottle and accentuate the
curved, rounded effect of the bottle's upper part and, second, are highlighted by the presence on
the lower part of the bottle of grooves running in the opposite direction, the whole forming a
design which is striking and easy to remember.”48 (My highlighting). The interesting point
in relation to the thesis question is that the Court considered the bottle distinctive due to the fact
43
T-305/02, Nestlé, paragraph 18
44
I.c. paragraph 30 and the trademark registration no. 000922179.
45
46
I.c. paragraph 34
47
See also C-361/04 P, Ruiz-Picasso and others v OHIM, paragraph 42
48
8
that the “design is striking and easy to remember”, showing that designs may in fact be regis-
tered as trademarks as long as the design is distinctive. The Court further noted that the quality
of the design of the bottle, was “capable of holding the attention of the public concerned”.
Hence, the relevant public would be capable of distinguishing the bottle in question from other
bottles with a different commercial origin. Here, the overlap between designs and trademarks
is quite notable. However, the Court is only able to consider the quality of the design as long as
the design does not in turn give “substantial value to the goods.”49 The consequence of these
seemingly contradictory assessments of a design in relation to trademarks will be discussed in
section 2.1.3.3.
2.1.1.1 Acquired distinctiveness through use.

It is possible to circumvent the requirement of distinctiveness if the applicant can prove that the
mark has acquired distinctiveness through use, cf. EUTMR art. 7 (3). To prove that the mark
has acquired distinctiveness however is not easy.
In a recent case, T-411/14, the Coca-Cola Company sought to register a simpler version of the
Coca-Cola bottle as a trademark:50
The Court examined each part of the mark to assess whether it “departs significantly from the
norms or customs of the sector”51 and found that the mark was a “mere variant of the shape and
packaging of the goods concerned which will not enable the average consumer to distinguish
the goods in question from those of other undertakings”.52
The court then went on to assess whether the mark had acquired distinctiveness through use. 53
The Coca-Cola Company had submitted a large number of evidence to support its claim that
49
EUTMR art 7 (1) (e) (iii)
50
Fels (2016) p. 2
51
T-411/14, Coca-cola bottle, paragraph 39
52
I.c. paragraph 51
53
I.c. paragraph 57
9
the mark had acquired distinctiveness. Amongst others, they supplied user surveys from 10
member states to prove that the majority of consumers associated the mark with Coca-Cola, in
addition sales figures from the EU were submitted. The Court first noted that customer surveys
from 10 member states was not enough to prove that the mark had acquired distinctive character
throughout the European Union.54 In the light of the documentation provided, the court con-
cluded that the Coca-Cola Company had not proved that the mark had acquired distinctiveness
throughout the European Union. This decision shows how difficult it presently is to register a
three-dimensional trademark in the European Union, when even a large company such as Coca-
Cola, cannot meet the demands for proving a marks acquired distinctiveness.
2.1.2 Descriptiveness
EUTMR Article 7 (1) (c) serves the public interest that a trademark may not be registered if it
serves to designate characteristics of goods and services, as such marks should be available to
be freely used by all.55 For example if the mark designates the geographical origin of the prod-
uct. This exclusion is scarcely used on three-dimensional marks, but a three-dimensional mark
may nonetheless be regarded as descriptive.56 There is not a large difference between this pro-
vision and the requirement of distinctiveness following art. 7 (1) (b), and they in many cases
may both apply.57 However, art. 7 (1) (c) is the applicable regulation where the mark should be
refused in accordance with the underlying interest that descriptive signs should be available to
be “freely used by all”.58 In comparison, whether a mark should be freely used by all may not
be considered under art. 7 (1) (b).59
2.1.3 Grounds for refusal under art. 7 (1) (e)

Any application for a three-dimensional trademark must be assessed in relation to the absolute
exclusions from protection set forth in EUTMR art 7 (1) (e). Shapes cannot be registered as
trademarks if they consist “exclusively” of a “shape”, “or another characteristic”, that 1) results
from the nature of the goods themselves, 2) are necessary to obtain a technical result or 3) gives
substantial value to the goods. The requirement of “or another characteristic” was added to
EUTMR on 23 March 2016. It goes without saying that this will not have much effect on the
interpretation of art. 7 with reference to marks consisting of shapes. Hence it will not be dis-
cussed further. The mark must be barred from protection if it falls under one of these categories.
54
T-411/14, Coca-cola bottle, paragraph 80
55
Joined cases C-53/01 to C-55/01, Linde
56
Bøggild and Staunstrup (2015) p 178, and Joined cases C-53/01 to C-55/01, Linde paragraph 75.
57
58
C-173/04, SiSi-Werke, paragraph 62
59
10
The term “exclusively” denotes that the requirement is met only if all of the essential charac-
teristics of the shape fall under one of the grounds for exclusion,60 i.e. that the technical function
exclusion only applies if the shape consists only of technical features and that exclusion does
not apply if the shape consists both of technical features and features that bring substantial
value. However, this is not the case. The Court of Justice has interpreted the exclusion in such
a way that even if the shape could be denied based on a number of grounds for refusal, for
example that it consists of both technical features and features that gives substantial value to
the goods, the application must still be refused as long as one of the grounds fully apply to the
sign, but the exclusions may not be applied in combination.61 This means that a product which
preforms multiple functions may still be refused pursuant to art. 7 (1) (e). For example, a loud-
speaker has a technical function of enabling a consumer to listen to music, but it may also
perform a decorative function.62
Each of the three exclusions must always be interpreted in light of the public interest underlying
each ground.63 All of the three grounds have a primary purpose of ensuring that some shapes
are reserved for the public domain, or for certain time limited rights, such as designs and pa-
tents. The grounds for refusal in art 7 (1) (e) are absolute, which means that distinctiveness
cannot be acquired through use, cf. EUTMR art 7 (3). This was further confirmed by Court of
Justice in case C-371/06, Benetton/G-star.
2.1.3.1 The nature of the goods themselves

Refusal based on the nature of the goods themselves must be interpreted in light of the public
interest to prevent monopolisation of certain basic characteristics of goods, the “natural” form
of goods64. There are still no cases from the courts where this ground for refusal has been ap-
plied.65 As this exclusion precludes marks from obtaining distinctiveness through use, a mark
that may fall under the scope of this condition is usually refused under article 7 (b), which
renders the mark available for obtaining protection on the basis of acquired distinctiveness66.
Even so, the General Court concluded in case T-122/99, Proctor & Gamble that art. 7 (1) (b)
and art 7 (1) (e) (i) may not be considered on equal terms.67 The Court noted that as the soap-
bar in question consisted of “bends inwards along its length and has grooves which do not come
60
Addelshaw Goddard (2015)
61
C-205/13, Hauck v Stokke paragraph 41-43
62
Opinion of Advocate General Szpunar, Case C-205/12, Hauck v Stokke, paragraph 85
63
Joined cases C-108/97 and C-109/97, Windsurfing Chiemsee, paragraph 25-27
64
EUIPO, Draft Guidelines (2017) p 5
65
EUIPO, Draft Guidelines (2017), p.5
66
Bøggild and Staunstrun (2015) p. 181
67
I.c. p. 181
11
about as a result of the nature of the product itself”68, the bar did not consist exclusively of a
shape resulting from the nature of the goods. The exclusion is “[l]imited to shapes identical to
acquired goods”,69 meaning that the shape serves the function of excluding from protection all
shapes that result from the nature of the product, such as the shape of fruit, or a ball.70
2.1.3.2 Necessary to obtain a technical result

The public interest behind the exclusion of shapes that are necessary to obtain a technical result,
is to exclude the monopolisation of functional elements that should either be reserved for the
public domain, or should be registered as patents, taking into account the time limited protection
of patents.71 The trademark should never preclude competitors by incorporating the same func-
tional elements in their products, or limit their freedom of choice in regard to the functional
elements of a product.72
The technical function exclusion was interpreted and clarified by the Court of Justice in 2002
in the case Philips v Remington73. The case was a British infringement-case where Philips had
contested a later mark by Remington for infringement of its trademark; a shaver with “three
circular heads with rotating blades in the shape of an equilateral triangle”74. The fourth question
presented to the Court of Justice was whether or not the technical function exclusion can be
overcome by establishing that there are other shapes that might be used in order to obtain the
same technical result. The court concluded that “the provision cannot be overcome by estab-
lishing that there are other shapes which allow the same technical result to be obtained.”75 The
result was that the invalidity of the trademark was upheld.
The result in Philips v Remington was upheld by the Court of Justice in the Lego decision. The
modern Lego brick was patented in 1958.76 Because of this, it can no longer be registered as a
design. Thus Lego wished to register the following shape as a trademark:
68
T-122/99, Proctor & Gamble, paragraph 55
69
Thorning and Finnanger (2010) p. 109
70
Derclaye and Leistner (2011) p. 70.
71
C-48/09 P, Lego Juris v OHIM, paragraph 43
72
According to established case law, see i.a. C-299/99, Philips v Remington paragraph 78-79
73
C-299/99, Philips v Remington
74
I.c. paragraph. 11
75
I.c. paragraph 84
76
Cendrowicz, (2008)
12
The judgement under appeal was whether the Lego brick consisted exclusively of a shape which
was necessary to obtain a technical result. The court noted that the brick had become distinctive,
and was “a sign capable of distinguishing the appellant’s goods from others which have another
origin.”77 The General Court however found even if the shape was distinctive, all the charac-
teristics of the brick, except for the colour, was functional. The characteristics primarily allowed
bricks to be combined. The Court of Justice could not contest this conclusion78. Allowing the
registration of a sign which consists exclusively of technical functions prevents competitors
from using similar shapes.79 Neither trademark, nor design regulations allow for such shapes to
enjoy more than a time-limited exclusivity. The current situation is that the technical function
exclusion is very difficult to overcome if the trademark in question consists of a product that is
meant to perform any technical function.
The Design Regulation contains a similar provision barring from protection features of appear-
ance solely dictated by its technical function80. These two provisions will be compared below
in section 3.1.3.1.
2.1.3.3 Substantial value to the goods

The “substantial value exclusion” is the provision that most directly limits the scope of trade-
mark protection in relation to design law.81 The underlying public interest is to prevent a mo-
nopolization of such shapes.82 With this provision, the overlaps between trademarks and designs
(and of course copyright, which will not be discussed here) is apparent.83 In fact, the exception
has been included in order to reflect this limitation on trademarks due to designs being the
appropriate institute.84 Hence, this exception is discussed a little more extensively than the pre-
vious ones. As previously mentioned, the design may factor into the examination of a marks
inherent distinctiveness, but only so far as it does not exclusively bring substantial value to the
77
C-48/09 P, Lego Juris v OHIM. paragraph 40
78
I.c. paragraph 74
79
I.c. paragraph 56
80
CDR art 8 (1)
81
Suthersanen (2000) p. 400.
82
T-508/08, Bang & Oluffsen, paragraph 66
83
Gielen (2014) p. 164-169
84
Derclaye (2011) p. 68
13
goods. However, the exclusion is not limited to the artistic or ornamental value of the goods.85
The Court of Justice in C-205/13, Hauck v Stokke concluded that the exclusion may also be
used if other characteristics give the product significant value.86
The substantial value exclusion has only been explicitly applied by the court in T-508/08, Bang
Oluffsen, though it has been discussed in relation to other cases such as Hauck v Stokke87. The
court noted that the “design is an element which will be very important in the consumer’s choice
even if the consumer also takes other characteristics of the goods at issue into account”88. It was
hence concluded that because the design of the loudspeakers, as admitted by the applicant, was
an essential element of the branding of the loudspeakers and increased its appeal, the shape of
the loudspeakers in turn gave substantial value to the goods.89 The loudspeaker is shown below:
The decision has been criticized by several authors90 wo argue that the main reason for buying
a loudspeaker is the quality of the sound, and that even if the design is relevant, it is not deci-
sive.91 The “substantial value exclusion” can seem to effectively prevent the registration of
designs as trademarks when the aesthetic characteristics of the design increase the appeal of the
product.92 The “substantial value exclusion” has also, especially following the Bang & Oluffsen
decision from the General Court, been subjected to a lot of criticism. Seemingly regardless of
the Bang & Oluffsen decision, CTM no 6 481 659, an application sought for a docking station
for MP3/4-players and loudspeakers was accepted per se by OHIM in 2008 right after the Bang
& Olussen-case93. The docking-station is shown below:
85
Bøggild and Staunstrup (2015) p. 187, and C-205/13, Hauck v Stokke, paragraph 30
86
C-205/13, Hauck v Stokke paragraph 30
87
I.c.
88
T-508/08, Bang & Oluffsen, paragraph 73
89
90
91
i.e. Gielen (2014) p. 164-169
92
Bøggild and Staunstrup (2015) p. 74-75
93
Thorning and Finnanger (2010) p. 124
14
There seems to be no apparent reason why this docking-station should be considered in a dif-
ferent way from the loudspeaker94. It seems equally true for this mark that the design of the
docking station is an essential element that increases its appeal and, in turn, the commercial
value of the docking-station. Since the question of the limit of the “substantial value exclusion”
has not been interpreted by the courts, there is no conclusion as to exactly how the exclusion is
to be interpreted. The boundary between a distinctive design and a design that brings substantial
value to the goods is unclear. There seems, however to be reason to conclude that practice, at
least from EUIPO, is in consistent in regards to the substantial value exclusion.
As noted in section 2.1.1.1, the design, if it is “striking and easy to remember”95, may be con-
sidered in order to determine a mark’s distinctiveness. However, it seems that if the design is
too striking and easy to remember, the mark cannot be registered, because the design then brings
substantial value to the goods. The substantial value exclusion illustrates the border-line be-
tween trademarks and designs, and makes apparent that clarification from the Courts of the
European Union or the law-makers must clarify what constitutes a design where, the mark is
inherently distinctive, and what constitutes a design, where the sign consists exclusively of fea-
tures that bring substantial value to the goods or services.
2.1.3.3.1 The current situation

The Max Planck institute in its 2011 report on the overall functioning of the community trade-
mark criticized the development with regard to the consequences of the court’s interpretation
of EUTMR art 7 (1) (e) (iii). The report notes that though shapes with designs that significantly
differ from pre-existing designs (and only these) qualify as inherently distinctive, the fact that
such shapes often are particularly attractive for consumes still makes them barred from protec-
tion.96 The issue of the exclusion is further amplified by the fact that the assessment of “sub-
stantial value” is in effect “depending on the public’s apprehension, which involves subjective
94
95
96
Max Planck Institute (2011) p. 72
15
evaluations”.97 As the public’s perception changes over time, so should the assessment of sub-
stantial value, according to the report. The institute argued that “a shape has initially attracted
consumers by its aesthetic appeal, but has later-on developed a high degree of distinctiveness
and is mainly appreciated for that reason”98 should be registered. In other words, where that a
design which was originally bought because of its aesthetic appeal may in time develop a degree
of freedom, if the appealing design becomes widely known. The institute therefore argued that
the rationale behind the “substantial value exclusion” no longer applies.99 The institute in turn
proposed that art. 7 (1) (e) (iii) CTMR and the corresponding art. 3 (1) (e) (iii) of the directive
should be deleted and replaced by a provision which would allow the protection of shapes that
would initially be excluded because of the commercial value of the design if the design had
become distinctive through use.100 Interestingly enough, the amendments to the directive im-
plemented on 23 March 2016 instead expanded art. 7 by including the term “or another charac-
teristic”. It seems therefore that there is no opening in the EU for allowing the registration of
trademarks if the commercial value of the shape is increased by the appeal of the design.
2.2 Examination of shape marks

In order to make the assessment of distinctiveness easier, the EUIPO has developed guidelines
for examining three-dimensional marks. These guidelines are not a source of law, as practice
from EUIPO is not binding for any of the appeal chambers 101, instead the guidelines are con-
sidered by the courts only as “a set of consolidated rules setting out the lines of conduct which
OHIM itself proposes to adopt”.102 Bearing this in mind, the guidelines may still indicate how
three-dimensional marks are examined by the registration office, as the guidelines are based on
practice from the General Court and the Court of Justice. The guidelines group three-dimen-
sional trademarks into three categories103:
1. Shapes unrelated to the goods and services themselves

2. Shapes that consists of the shape of the goods themselves or part of the goods
3. The shape of the packaging or containers
97
Max Planck Institute (2011), p. 73
98
I.c. p. 73
99
I.c. p. 73
100
I.c. p. 74
101
102
T-410/07, Jurado paragraph 20
103
EUIPO guidelines (2016) p. 36
16
According to the guidelines, shapes that are unrelated to the goods or services themselves, such
as the Michelin Man registered for tires, are usually distinctive.104 The examination of signs
that consist of the shape of the packaging or container should according to the guidelines follow
three steps. First, to consider whether or not one of the grounds for refusal under art. 7 (1) (e)
of CTMR applies, since acquired distinctiveness is not an option. Second, to consider if the
mark contains other elements, such as words or labels.105 These additional elements may render
the mark distinctive, but it is important to note that this does not necessarily give any protection
to the shape itself. Third, the distinctiveness of the shape itself is to be examined pursuant to
art. 7 (1) (b) and (c). In practice however, the EUIPO usually first considers the marks distinc-
tiveness, and consequently most marks are refused on the basis of a lack of distinctiveness.106
3 The EU-system for the protection of design

A Community design, unlike the EU trademark, is not reliant on a registration in order to obtain
protection. An Unregistered Community Design may obtain protection for three years. How-
ever, as this thesis focuses on the requirements for registration, the Unregistered Community
Design will not be discussed further. The relevant regulation on Registered Community Designs
is Council Regulation 6/2002 on Community designs (CDR), which awards a design that meets
the requirements set forth in the Regulation exclusive rights for 25 years from the registration
date, provided that the registration is renewed every five years, cf. CDR art. 12.
CDR Article 3 (a) stipulates that a design which may be registered is “the appearance of the
whole or a part off a product (…)”. Article 3 (b) defines a “product” as “any industrial or hand-
icraft item, including (…) packaging”. In other words, the source of protection for the shape of
goods or their packaging is the same under trademark and design law, but the requirements for
obtaining protection are different.
3.1 Conditions for obtaining protection

3.1.1 Novelty
Article 5 (1) states that a design is considered new if “no identical design has been made avail-
able to the public”. For registered community designs, this date is the date of filing, or the date
of priority107, cf. art 5 (1) (b). Art 5 (2) specifies further that designs are identical “if their
features differ only in immaterial details”. In practice, this means that the design must be com-
pared to designs that have previously been disclosed. However, it is the specific elements of the
104
EUIPO guidelines (2016) p. 36
105
I.c.
106
Bøggild and Staunstrup (2015) p. 149-150
107
When using the international system for registration. The date of priority is the date of the first filing of the
application. See WIPO “what is meant by priority date?”.
17
design that are to be taken into account, and not the general ones.108 This means that if the
design in question is no longer “new”, then the design may not be registered. In these cases, the
rights holder might only have trademark registration left as an option. For trademarks, there is
no requirement of novelty.
3.1.2 Individual character

Article 6 CDR states that a design has individual character “if the overall impression it produces
on the informed user differs from the overall impression on such a user by any design which
has been made available to the public”, and must be assessed in consideration of the degree of
freedom the designer had in developing the design, cf. art 6 (2). This entails that the nature of
the product must be taken into account when determining the designer’s freedom in order to
assess the overall impression of the design.109 The Design Regulation recital 14 stipulates that
the assessment of “individual character” should be based on whether the overall impression of
the design “clearly differs” from the overall impression produced on him by the existing design
corpus. The definition and importance of “the informed user” will be discussed in section 4.1.
On the definition of “novelty” and “individual character”, there is some clarification available
from the courts. The design report from April 2016110, summarised the practice from the Gen-
eral Court in T-15/13, Group Nivelles/OHIM, T-153/08, Shenzen Taiden/OHIM and T-10/08,
Kwang Yang/OHIM, and makes the recommendation that the Design Directive should introduce
some clarification that when determining the individual character of a design. The report sug-
gests that “national offices and courts should refer to the nature of the product, the manner of
the use of the product, the purpose for which that product is intended, and the industrial sector
to which it belongs or circulates within” when it determines individual character. 111 When these
steps are taken, the court assessing individual character must compare the visual aspects of the
design with the existing design corpus. This means that the assessment of individual character,
in effect will result in a subjective comparison made by the court.112
3.1.3 Technical function exclusion

A relevant aspect of design rights, which should be considered in relation to the shape of prod-
ucts or their packaging, is industrial designs. Industrial designs that serve a function may be
108
Conea (2011) p. 129-143
109
Russel-Clarke and Howe (2005) P. 39
110
The European Commission commissioned the report “Legal review on industrial Design protection in Eu-
rope”. However, the report does not reflect the view of the Commission. The final legal analysis was carried
out under the aegis of Dr. Uma Suthersanen, with Professor David Musker and Dr. Marc D. Milmer. See
footnote 1, page 9 of the report.
111
Design report (2016) p. 71.
112
Suthersanen (2000) p. 40
18
registered as community designs. However, as with the technical function exclusion for trade-
marks, design protection is excluded for “features of appearance of a product which are solely
dictated by its technical function”.113 The practice related to the “technical function exception”
for designs, seems to differ between the member states within the EU. There is some uncertainty
about what constitutes as “solely dictated by its function”114. However, that the whole of the
design must be barred from protection does not follow from the fact that the design consists of
technical features. Design protection will only be denied for the features of the design that leads
to the technical function.115
Further, design registration is barred for designs that consists of “features of a product which
must necessarily be reproduced in their exact form and dimensions […]”, cf. CDR art 8 (2).
This is known as the “must fit” exclusion.116 From the “must-fit” exclusion however, an excep-
tion is made for designs “serving the purpose of allowing the multiple assembly or connection
of mutually interchangeable products within a modular system”117, so-called “modular prod-
ucts”. According to some authors, this exception is based mostly on the lobbying power of
certain modular product manufacturers.118 Nonetheless, these are still not excluded from the
exclusion in article 7 (1), and hence may still be considered to be solely dictated by function.119
In the following section the exclusions for technical function in the trademark- and design Reg-
ulations is compared.
3.2 The multiplicity of forms theory

Both the trademark and design regulations contain provisions preventing the registration of
shapes that consist of functional elements. Art. 8 (1) of CDR stipulates that a community design
cannot be registered if the design subsists of features “which are solely dictated by its technical
function”, whilst art. 7 of EUTMR prohibit the registration of shapes that are exclusively “nec-
essary to obtain a technical result”. The technical function exclusion for trademarks has been
subjected to a great number of rulings by the Court of Justice, whereas the extent of the exclu-
sion for designs has yet to be definitively interpreted by the court120. However, the difference
113
cf. CRD art 8 (1) and the Directive art 7 (1)
114
Wilkof, Basheer (2011) p. 268
115
116
Russel-Clark and Howe (2005) p. 44
117
CDR article 8 (3)
118
Russsel-Clark and Howe (2005) p. 45
119
I.c. p. 45
120
Wilkof and Basheer (2012) p. 268
19
between trademarks and designs with reference to technical function was interpreted by Advo-
cate General Ruiz-Jarabo Colomer, in his opinion in the case Philips v Remington121. The Ad-
vocate General stated functional designs, may still “be eligible for protection if it can be shown
that the same technical function could be achieved by another different form”122 His interpre-
tation was based on a comparison of the design and trademark directives, but the requirements
are the same in the directives as in the regulations. In the Advocate Generals opinion, the word-
ing “dictated” in the design directive, compared to the wording “necessary” in the trademarks
directive opened for a greater level of “functionality” with regards to designs in comparison to
the trademarks directive which “excludes all shapes necessary (in the sense of ideally suited) to
achieve a technical result”123. In other words a design may be registered as long as it can be
proved that the technical result could be achieved in at least one additional way. This view,
known as the “multiplicity of forms” theory was adopted by the English court of Appeal in
Landor v Azure and seems to suggest that the bar for registering shapes with functional elements
is set much higher for trademarks compared to designs124.
The opinion has yet to be upheld by either the Court of Justice or the General Court. However
in 2009 the Third Board of Appeal expressed that the “multiplicity of forms theory” presented
by the Advocate General cannot be upheld. 125 The case was a design case, and the contested
design shown below was registered for the “chaff cutters”126:
The appellant contested that all of the features of the RCD were solely dictated by its technical
function. The BoA first stated that the interpretation of art 8 (1) CDR is highly controversial.
The BoA referenced the view of the Advocate General in Philips, known as the “multiplicity-
of-forms theory”, which, stipulates that "if the designer has a choice between two or more
configurations, the appearance of the product is not solely dictated by its technical function”127.
The BoA then went on to pointing out the flaws in the theory; that a design can be registered as
121
Opinion of Mr Ruiz-Jarabo – Case C-299/99
122
I.c. paragraph 34.
123
Opinion of Mr Ruiz-Jarabo – Case C-299/99 paragraph 34-35.
124
125
I.c.
126
R690/2007-3 Lindner Recyclingtech v Franssons Verkstader AB
127
R690/2007-3, Lindner v Franssons, paragraph 28.
20
long as an alternative product configuration could achieve the same function. Hence, if there
are two possible technical solutions, both could be subject to a design registration, even by the
same person. This precludes the purpose of art 8 (1), which is to prevent design law from
monoplilizing technical solutions and put the brakes on technical development.128 The BoA
consequently concluded that the ”multiplicity of forms” theory cannot be upheld and thus
concluded that purely functional designs cannot be protectable; “as long as functionality is not
the only relevant factor, the design is in principle eligible for protection. It is only when
aesthetic considerations are completely irrelevant that the features of the design are solely
dictated by the need to achieve a technical solution.”129 In essence, a technical function does
not necessarily preclude the protection of a design, but may rather preclude protection of certain
features.130 The design as a whole might however in certain cases be precluded from registration
if all of the essential features are solely dicteated by its technical function.131
The difference between trademarks and designs with regards to functional elements might
therefore not be as large as the opinion of the Advocate General in Philips might suggest, but
as this question still has not been answered by the Court of Justice, there is no definete answer.
However, the result from the Board of Appeal seems to best reflect the objective of art 8 (1)
and be in accordance with the wording.
The 2016 design report asked the member states which theory should be preferred.132 In
summary, 33% of the responents answered that they favoured the “multiplicity of forms”
approach, while 50% preferred to look at the design at hand and, thus determine whether or not
each feature is dictated by a technical function. 17 % responded that they did not know which
approach they preferred. The report suggested no less than four different alternative approaches.
Clearly the “technical function exclusion” for designs still needs to be definetly answered by
the Court of Justice, or be legislated within the Trademark- and Design Regulations.
3.2.1 Visibility and complex products

A design is defined as “the appearance of the whole or part of a product”. The Design Regula-
tion contains a special rule relating to designs of “complex products”.133 A complex product is
a “product which is composed of multiple components which can be replaced permitting disas-
sembly and re-assembly of the product”, cf. CDR art 3 (c). A design relating to a part of a
128
R690/2007-3, Lindner v Franssons. paragraph 30
129
I.c. paragraph 35
130
Wilkof, Basheer (2012) p. 269
131
I.c.
132
Design report (2016) p. 84
133
Russel-Clark and Howe (2005) p. 29
21
complex product is only to be considered new and individual if it is visible during normal use.134
This has caused some confusion as to whether a design in general needs to be visible. It should
to this effect be noted that there is no general requirement determining that the design needs to
be visible during normal use of the product.135 The visibility rule pertains only to spare parts
that can be replaced, permitting assembly and re-assembly of the product.136
3.3 Examination of designs

Unlike a trademark application, a design application does not undergo any formal examination
by EUIPO. The office simply checks that the application is in accordance with the formal cri-
teria of the application process. In other words, a design right that does not qualify as individual
or novel may still exist.137 The consequence is that the validity of a design registration is only
really put to the test whenever a design is contested. The trademark, in comparison must comply
with the absolute grounds for refusal before undergoing an opposition period where the mark
can be contested based on a likelihood of confusion with an earlier trademark.
4 Invalidity due to conflict between a EU trademark and a

community design
The objective of this section is to show the overlaps between the Design- and Trademark Reg-
ulation in practice. The overlaps between designs and trademarks are, as previously mentioned,
not explicitly regulated by either regulations. However, that there are overlaps is implicit from
Article 25 (1) (e) of the CDR, which stipulates that a community design may be declared invalid
if a distinctive sign is used in a subsequent design. Similarly, EUTMR art 53 (2) (e) stipulates
that an EU trademark shall be declared invalid on the basis of infringement proceedings pursu-
ant to an earlier industrial property right, thus including an earlier design registration. The cases
where a design or trademark infringe on an earlier trademark or design right is therefore worth
examining for the purpose of this thesis. These types of infringement proceedings are one of
the few areas that clearly show the potential overlaps between designs and trademarks in prac-
tice.
4.1 Source of law and the relevant public’s perception

The source of law for infringement disputes arising between trademarks and designs is decided
under the law of priority138. This means that when the prior registration is for a trademark, the
134
R 0690/2007-3, chaff cutters
135
Stone (2015) p. 13
136
I.c. p. 13
137
138
Hartwig (2010) p. 20-23
22
trademark law is applied. When a prior registration is a design, the design law is applied.139 The
source of law is relevant, because one of the major differences between trademarks and designs
is that the question of whether there is infringement upon an earlier mark or design by a later
one or not, must be resolved using the standard of whether or not the two shapes create a dif-
ferent overall impression on the relevant public140.
With reference to trademark law, the relevant public is “the average consumer”. The “average
consumer” is not mentioned in EUTMR, but it follows established case-law that “the average
consumer” is the relevant public. According to established case-law, the average consumer is
normally a person that is “reasonably well-informed and reasonably observant and circum-
spect.”141 The average consumer is usually not in a position to compare marks side by side, but
must rely on an imperfect picture of them, kept in his mind.142 However, the average consumer
may in some cases be considered to have a higher level of attention depending on the category
of goods or services in question.143
The relevant public in relation to design law is “the informed user”144. The informed user is
according to design case-law “not a user of average attention, but a particularly observant one,
either because of his personal experience or his extensive knowledge of the sector in ques-
tion.”145 Where possible, he is also able to make a direct comparison between two designs, and
he possesses a certain degree of knowledge of exiting designs in the sector, and the features
these normally include.146
This suggests that the informed user will be more aware of differences in designs and trends
compared to the average consumer, and further that the informed user is less likely to confuse
the designs, compared to the average consumer. Therefore, in any cases involving infringement,
the relevant public, due to his attention level, should be more likely to discern the differences
of designs compared to the differences between three-dimensional trademarks. The assessment
of infringement should consequently be stricter under trademark law. Whether or not this dif-
ference has any practical effect on the scope of protection for trademarks and designs will be
discussed below in section 5.2.5.
139
Hartwig (2010) p. 20-23
140
For designs see: CDR art 10(1) and for trademarks see i.e: C-251/95, Sabel, paragraph 22
141
C-210/96, Gut Springheide, paragraph 31
142
C-342/97, Lloyd Schuhfabrik, paragraph 26
143
I.c.
144
RCD art. 6 (1)
145
C-281/10 P, PepsiCo v Grupo Promer paragraph 55
146
I.c. Paragraph 59
23
4.2 Invalidity of a Registered Community Design based on likelihood of
confusion with an earlier Three-dimensional EU trademark147
There are not many cases involving potential infringement of an earlier three dimensional trade-
mark by a later design. Further, there are still no cases from the EU-courts involving infringe-
ment of a previous design registration by a later trademark.148 One of the few examples of the
formeris General Court case Su-Chen v OHIM-AM Denmark149, concerning a cleaning device.
The applicant alleged breach of both art. 25 (1) (e) CDR and art 9 (1) (b) CTMR. The contested
design in the case is shown below:150
The earlier three-dimensional trademark151:
The General Court declared, based on the same criteria they would in pure trademark cases,
that the registered design was invalid due to a likelihood of conusion with the earlier three-
dimensional trademark.152 The General Court found that the marks gave a similar overall im-
pression.153 Thus, the later design were considered an infringement on the earlier trademark.
From this, an important question should be noted, would the result would have differed had the
earlier mark been a design? The Su-Chen-decision how similar designs and trademarks may be
in practice. There is a large possibility of overlaps.
147
Clark (2014) p. 106-108
148
Hartwig (2010) p. 20-23. Since this article there has not been any such cases according to EUIPO case over-
views 2013-2015.
149
T-55/12, Su Chen v OHIM
150
I.c
151
Trademark no. 5185079
152
Clark (2014). P.106-108
153
I.c.
24
It can also be noted from the Su-Chen decision that the mark and the design are represented in
a highly similar fashion. Further, they were both applied for cleaning products. There seems to
be no evidence as to why one of the shapes was registered a trademark and the other a design.
Thus, in this next section, I will outline the similarities and differences between three-dimen-
sional trademarks and designs with reference to the application process and the scope of pro-
tection.
5 Similarities and differences between designs and three-

dimensional trademarks
In the sections above I have outlined the requirements for obtaining a trademark- or design
registration in the EU. In order to provide a general overview of how the two systems coexist
and overlap, I have made remarks on the similarities and differences with reference to the re-
quirements for obtaining protection. In this next section, I will make a comparative study into
the application process and the scope of protection conferred under the two different registra-
tions. This will help us to further assess how the systems coexist and overlap.
5.1 Similarities and differences with reference to the application process

As previously noted, there is no EU-law that precludes the registration of the same shape as
both a trademark and a design. The two rights can exist side by side. An example of such a dual
right is the UEFA-Champions League trophy, which is protected both as a 3D EUTM154 and an
RCD155.156 The question of the border line between trademarks and industrial designs was fur-
ther examined by the International Association for the protection of Industrial Property (AIPPI)
in 2000. The 2000 yearbook summarized reports from 31 different countries throughout the
world, on the question of the borderline between trademarks and industrial designs. The major-
ity of the countries reported that it was possible to cumulate the two rights.157 The report shows
that there is a tradition in IP law to allow such dual protection.
5.1.1 The application process

EU-wide protection has been available for both designs and trademarks since 2003, when the
Design Regulation was introduced.158 One of the most evident similarities between trademarks
and designs is that the graphical representations used in the applications are similar, as evident
154
EUTM no 8860025
155
RCD no 635750-33-34
156
Gindrat, François (2012)
157
AIPPI yearbook (2000). Page 224.
158
Tordoir, Florence (2016)
25
from reference to the cleaning devices in T-55/12. The current requirement that a trademark
must be represented graphically in order to obtain protection will desist159. However, this will
most likely not affect the application process with regards to three-dimensional trademarks to
a large degree, as the marks must still be represented in a way that allows the competent au-
thorities to “determine the clear and precise subject matter of the protection afforded”.160 The
change will primarily ease the application process for other non-traditional marks, such as those
consisting of sound. For designs, the requirement is simply that the application must contain “a
representation of the design suitable for protection”.161 Trademark applications must be related
to classes of goods or services pursuant to the Nice Agreement162, whereas industrial designs
must be applied for in relation to the classes set forth in the Locarno Agreement163. In practice,
this means that the applications will appear similar.
The registration process for obtaining a design registration is much quicker and less expensive
compared to that of trademarks. As of October 2016 a basic design registration in the European
Union costs €350 and an additional registration costs €115.164 In comparison, the cost of a basic
trademark starts at €850 for one class.165 A design registration may also be cheaper, because
multiple designs can be filed together in a single application166. Multiple designs may be filed
together if all the designs belong to the same Locarno class, meaning that they relate to the same
goods or services167. This means that variations of the same design can easily be filed together
at once. In comparison, every trademark application must go through a separate application.168
If variations of the trademark are to be registered, they must be registered using separate appli-
cations.
The 2015 report by EUIPO on facts and figures shows that 130 401 trademark applications
were filed in the EU, compared to 97 500 design applications.169 These numbers represent all
the trademark- and design applications, not only applications for shapes. Regardless the num-
bers does indicate that both systems are widely used. The average time for registration is hard
159
Amending Regulation 2015/2424, Article 4 (1) (b). Coming into force on 1 October 2017.
160
Amending Regulation 2015/2424, Article 4 (1) (b)
161
CDR art 36 (1) (c)
162
Bøggild and Staunstrup (2016) p.27
163
164
EUIPO (2015)
165
EUIPO (2016)
166
Carboni (2006) p. 261
167
Tordoir (2016) and CDR art 37 (1)
168
Carboni (2006) p. 261
169
EUIPO (2015), p. 4
26
to measure, but the European Trademark and Design Network (tdmn) website, gathers infor-
mation on the time it takes from filing to registration between different offices.170 The average
time for registration in the EU of a trademark that had opposition was, as of 2015, approxi-
mately 1,5 years. For trademarks with no opposition, it was 4 months.171 In comparison the
average time for the registration of a design was approximately three months in cases with user
interactions or deficiencies, and one week without172. In conclusion, the registration of designs
is both quicker and less expensive, compared to registering the same shape as a trademark.
5.1.1.1 Deferment
Another difference between the systems in terms of the application process, is that a design
applicant may request for a deferment of 30 months from the date of filing or date of priority
of the application before the design is published by the EUIPO.173 The aim of this provision is
to protect designers from having their works copied before they even launch.174 In comparison,
the trademark regulation contains no similar provision.175
This may also make it easier for the designer to register and protect the design, as they are not
limited to the one year grace period in art. 7 (2) (b) before the registered design must be pub-
lished. The grace period allows design that has been published by the designer or a third person
up to 12 months before the date of filing to still be considered “novel” for the purpose of art.
5.176 For a rights-holder wishing to protect trade-secrets before the design is launched, but who
still wants the design to be protected before the launch, a design protection may then be the best
option. A registered design may exist, even if it is not published.
By looking solely on the application process then, a design registration is the best option. The
application process for designs is easier and less expensive.177 Of course, the time and cost of
an application is usually not the most important to the rights holder in comparison to the scope
of protection offered once the design and/or trademark is registered. The scope of protection
will be discussed in the following section.
170
www.tmdn.org (2016)
171
Tmdn.org (2016)
172
I.c.
173
CDR art. 50 (1)
174
Musker (2002) p.180-181
175
Mewburn Ellis Intellectual property (2016), p. 1
176
177
Carboni (2006) p. 264
27
5.2 Similarities and differences with reference to the scope of protection
5.2.1 Overview
Up until this point, the focus of the thesis has been the differences and similarities between
designs and trademarks with regards to the requirements for obtaining the two different forms
of protection. As is evident from the points above, registering a shape as a community design
is in many ways easier than for the same shape to gain protection as a trademark. As long as
the design is novel, a design registration is the easier route, both in reference to the requirements
for obtaining protection, and the application process. However, an equally, or perhaps even
more important factor in deciding between registering a shape as a design or trademark is the
extent of protection that is given by the two rights. Having a registration matters little, if no
rights can be enforced based on that registration. Both the CDR and EUTMR offer the rights
holder exclusive rights to use the design or trademark, and to prevent third parties from using
the design or trademark without the consent of the rights holder.178 The question then is whether
this exclusive right is the same regardless of which type of protection is chosen. This question
must be answered by comparing infringement-cases from the courts. This comparison must be
made under the precondition that the trademark is distinctive, and does not fall under the exclu-
sions in EUTMR art. 7 (1) (e), and that the design is novel and has individual character.
At the onset of this endeavour, an immediate problem for reaching a clear conclusion as to the
scope of protection of designs should be mentioned. There has, been a relatively small number
of design cases before the court179. This poses a problem for anyone wishing to examine the
rights conferred when obtaining a community design registration. The terms “individual char-
acter” and “overall impression” have been interpreted by the courts on several occasions, but
there is still not a body of case law from the Courts to rely on. 180 What this entails is that any
conclusions on the scope of design cannot be drawn with absolute certainty. One of the reasons
for why there are so few decisions may be that the validity of a design registration is only tested
if there is an infringement action. Many design registrations then simply exist, because there is
no reason for the rights holder to test its validity unless the holder feels that his or her exclusive
rights to the design has been infringed upon.
Similarly, since only a small number of three-dimensional trademarks are registered, very few
opposition-cases regarding such marks have ever reached the courts.181 For this reason it is also
impossible to conclude with certainty on what protection is offered by a registration for a three-
dimensional trademark. With this in mind, I will examine some of the practice from the courts
178
CDR art. 19 (1) and EUTMR art. 9 (2)
179
Stone (2015) p. 10
180
I.c.
181
Finnanger and Thorning (2010) p. 261
28
in infringement actions brought against trademarks and designs in order to clarify the scope of
protection conferred under the two rights.
5.2.2 The overall impression

5.2.2.1 Determining the overall impression of designs
The scope of protection for designs is defined in CDR art. 10 (1). The scope of protection for
design includes all later designs that do not “produce on the informed user a different overall
impression”. The infringement test is a four-step test.182 First, the court must identify the design
for which protection is claimed for.183 This means that the product or design environment must
be identified.184 Second, the informed user of that product must be identified.185 Third, the de-
sign which is alleged to infringe must be identified. Fourth, the two designs must be compared
from the informed user’s perspective.186
In order to assess the overall impression, the “degree of freedom” of the designer must be taken
into consideration, cf. CDR art 10 (2). Taking the designers degree of freedom into account
entails that where the designer’s freedom is restricted due to the nature of the product, smaller
similarities between the designs may create a different overall impression.187 In comparison,
small differences between the designs may create the same overall impression where the de-
signer has a high degree of freedom.188 For example, the degree of freedom for fashion products
is high according to the General Court, because product trends and consumer wishes do not
impact the designer’s degree of freedom.189 This means that the scope of protection for certain
products, such as handbags is higher than the scope of protection of for example bottles, because
the functions of the bottle (holding liquids) imposes restrictions on the designer’s degree of
freedom.
In order to determine “overall impression”, it is the “basic structures and not the details”190
which must produce a similar or different overall impression on the informed user. However,
also the features that constitute the design must be taken into account by assessing how the
weight of the various individual features influence the overall impression191. The design may
182
Headdon (2007) p. 336-339
183
I.c.
184
185
Headdon (2007) p. 336-339
186
I.c.
187
T-23/13, paragraph 57
188
I.c.
189
Stone and Davies (2016) p. 14-16
190
T-23/13, paragraph 82
191
Headdon (2007) p. 336-339
29
consist of a combination of already disclosed features, as long as the design as a whole is novel
and has individual character.192 This means that it is the design as a whole, which must create
a different overall impression from the earlier design. The comparison of the two designs as a
whole, must however be made by examining the individual features that make up the design.
At this stage, it is the appearance of the designs that should be compared, not the sector the
product belongs to.193
Recital (14) of the Regulation stipulates that the assessment of “individual character” should be
based on whether or not “the overall impression produced on an informed user viewing the
design clearly differs from that produced on him by the existing design corpus”. A question that
has been raised in reference to the recital is whether the test “clearly differs” also applies to the
“overall impression” test in an infringement proceeding. There is no definitive conclusion to
this question, but it seems that the test is only relevant in determining the individual character.
The English Court of Appeal, in a case between Procter & Gamble and Reckitt Benckinser,
held that the “clearly differs” test is not applicable to infringement-cases.194 Further, it does not
seem that the courts of the European Union apply this criterion to infringement-cases either.
The Invalidity Division of EUIPO and Alicante community Design Court195 have referred to
the question of “impression” as the “effect or sensation” produced on the informed user by the
design.196 The test seems to be that the designs must produce a “different overall impression”197
not that the design must “clearly differ”. As such, it may seem that the bar is set lower for a
design to be considered to have a different overall impression compared to an earlier RCD, than
for the RCD to be considered distinctive compared to the existing design corpus.
The “informed user” of designs, as discussed previously, is a particularly observant one. The
designs should produce on him an overall impression which clearly differs from the overall
impression of previously disclosed designs. This test seems to be a very stringent one. In 2007,
the English court of appeal, in the case Procter & Gamble v Reckitt Benckiser concerning a
spray canister,198 compared the “informed user” to the “average consumer”. The court notes
192
Design Guidelines (2016) p. 34.
193
I.c.
194
EWCA/Civ/2007/936, Procter & Gamble Company v Reckitt Beckinser, paragraph 19
195
The Community design Courts resolve conflicts regarding unregistered community designs, while the inva-
lidity division resolve conflicts regarding registered community designs. Both are a part of the EUIPO.
196
Headdon Toby, (2007) p. 336-339
197
T-41/14, Argo, paragraph 62
198
EWCA/Civ/2007/936, Procter & Gamble Company v Reckitt Beckinser
30
that “things which may infringe a registered trade mark may not infringe a corresponding reg-
istered design.”199 It seems from this that the scope of protection for designs must be lower than
the scope of protection for trademarks. This will be discussed further in section 5.2.5.
5.2.2.2 Determining the overall impression of trademarks

The assessment of the likelihood of confusion set forth in EUTMR art. 8 is based on whether
the marks are identical, or whether the average consumer “could believe that the goods or ser-
vices come from the same undertaking or, as the case may be, from economically linked under-
takings.”200 If the marks are not identical, the assessment of overall impression of the marks is
made by comparing both the similarities of the marks and the similarities of goods or services
in the registration/application.201 In comparison, designs are compared in relation to the sector
where it belongs and the product on which the design is applied, in order to determine the
overall impression.202 I will only focus on the visual similarities between trademarks in this
section, as this is the most relevant in comparing designs and trademarks. The few cases that
exist on the likelihood of confusion between three-dimensional trademarks show that they are
mostly determined on the basis of a visual comparison of the marks.203
The degree of similarity between two marks must be examined globally by “taking into account
all factors relevant to the circumstances of the case”204. The visual similarities of marks are
examined “based on the overall impression given by the marks, bearing in mind, in particular,
their distinctive and dominant components.”205 In essence, the assessment seems highly similar
to the assessment of overall impression of designs outlined in the previous section. The most
evident difference is that is on the average consumer, who cannot compare the marks side by
side, and hence must rely on an imperfect recollection206, which the two marks must create a
different overall impression.
From this, it follows that the starting point for the assessment of infringement-cases involving
designs and trademarks is similar. The question is always whether the two shapes create the
same overall impression on the relevant public. However, this assessment may play out differ-
ently depending on whether the contested shapes in question are designs or trademarks. Some
199
T-122/99, Procter & Gamble, paragraph 28
200
C-39/97, Canon, paragraph 29
201
I.c. paragraph 17
202
203
204
C-251/95, Sabel paragrapg 22
205
I.c. paragraph 23
206
C-342/97, Lloyd Schuhfabrik, paragraph 26
31
have, as mentioned taken the view that the assessment of overall impression of designs and
trademarks entail that the scope of protection is more limited with regards to designs, compared
to the scope of protection of trademarks. The reason being that the informed user is more aware
than the average consumer, and will more easily denote differences between two shapes.207 By
examining infringement-cases regarding both trademarks and designs, the aim is to examine
whether this view is consistent with infringement practice concerning designs and trademarks.
5.2.3 Scope of protection of designs

The scope of protection for designs is in effect limited by the existing design corpus, meaning
that where there exists several designs consisting of the same elements, there is a higher likeli-
hood that the design in question will have elements in common with previously disclosed de-
signs.208 One of the first cases to reach the Court of Justice of the European Union is the case
of PepsiCo v Grupo Promer.209 Grupo Promer filed an application for a declaration invalidity
on the grounds that the following design belonging to PepsiCo lacked novelty and individual
character:
Grupo Promer claimed that the design infringed on its prior design:
The Court of Justice dismissed the appeal in its entirety, upholding the decision from the Gen-
eral Court. The General Court had concluded that the two additional circles when viewed from
above in the contested design were not enough to create a “different overall impression”210,
even though the designers freedom was severely restricted due to the standardization of certain
features of pogs (playthings), given their nature, and the fact that they should be inexpensive,
safe for children and fit to products.211 Even if designer’s degree of freedom was considered
restricted due to the nature of the product, and there are clear differences visible between the
two pogs (two additional circles), the Court considered that the two designs gave the same
overall impression on the informed user. The decision shows that the practical assessment of
207
Carboni (2006) p. 262
208
Headdon (2007) p. 336-339
209
C-281/10 P, PepsiCo v Grupo Promer Mon Graphic
210
C-281/10 P, PepsiCo v Grupo Promer Mon Graphic, paragraph 33-34
211
T-9/07 (the contested decision), Paragraph 70
32
overall impression might not pose such a large restriction on the scope of protection for RCDs
as the theoretical basis for the assessment might suggest. Below are two examples where the
General Court has found that the designs gave a similar overall impression, and two examples
where the General Court found that the designs gave a different overall impression.
5.2.3.1 Same overall impression

T-80/10, Bell & Ross v OHIM (only available in French)
Contested RCD Earlier design
T-337/12, Design of a corkscrew (Only available in French)

Contested RCD Earlier design
5.2.3.2 Different overall impression

T-399/12, design of armchair (only available in German and French)
RCD Previous RCD
The court noted that the different level of comfort of the chairs produced different overall im-
pression. This decision however may not be afforded much weight, as the Design law protects
33
the appearance of a product, the sense of comfort cannot be relevant. 212 Thus it has later been
suggested that this decision is wrong.213
T-41/14
RCD Previous RCDs
The designs were both registered for signboards for commercial purposes. The court noted that
the Board of Appeal was correct in finding that the degree of freedom was almost non-existent
with reference to the shape of the signboards, because they had to be folded.214 This had resulted
in a standardization in the field of features common to the type of signboards concerned.215
Because of this, it was only the difference of the handles of the signboards that could determine
a different overall impression. Because of the very limited degree of freedom of the designer,
and the different aspects of the handles, the later design was considered sufficiently different
by the General Court.216
The above mentioned practice shows that even though in theory, the assessment of “overall
impression” in relation to designs seems to be a very strict one, in practice this may not hold
true. The court only compares the elements that are not dictated by a technical function, or a
result of a standardization in the field217. If an element of a design is a result of a standardization
in the field, this aspect may not be considered for the purpose of determining overall impression,
as seen in the case of the signboards. By comparison, these aspects would probably have ren-
dered a trademark non-distinctive, because they do not depart significantly from the norms or
212
Stone (2015) p. 10-13
213
I.c.
214
T-41/14, Argo, paragraph 47
215
216
I.c. paragraph 60 and 62
217
I.c. paragraph 37
34
customs of the sector. This serves the underlying purpose that these types of shapes should be
available to all.
It is the aspects of the design that have individual character that must be compared in the as-
sessment of overall impression. For example, the handles of the signboards in the Argo deci-
sion, or the circles on the pogs in the PepsiCo decision, When looking at the courts practice
concerning the comparison of these elements, the assessment does not seem as strict. The han-
dles of the signboards were quite different, while the two additional circles on the later pog was
not very different from those on the earlier design.
5.2.4 Scope of protection of trademarks

There is little practice on the scope of protection for three-dimensional marks. The existing
practice shows that there are few cases where a later trademark has been considered to infringe
on an earlier registration. Because of the correlation between the mark and the goods and/or
services it is registered for, the protection is limited.218
The only case that I have found that reached as far as the General Court is case T-24/08. The
case concerned three-dimensional marks for bottles with a twisted neck. The earlier registration
consisted of a bottle, shown below:
The applicant filed a notice of oppostition for the registration of the bottle shown below:
The Court first noted that the marks had to be compared visually.219 Further, the Board of Ap-
peal was not wrong in concluding that there were significant differences between the signs. The
218
Bøggild and Staunstrup (2015) p. 329.
219
T-24/08, Paragraph 23
35
earlier sign appeared “longer, slimmer and therefore more delicate” that the applied sign which
consisted of a “more corpulent silhouette”.220 The fact that both bottles had a “helical-shaped”
neck was of little relevance, as the shape of the neck was very different.221 The Court concluded
that even though the previous mark had an “average degree of distinctiveness”222, and the marks
were applied for identical goods, there was no likelihood of confusion between the two
marks.223
Similar outcomes to the bottle-case can be found in decisions from the Board of Appeal224. In
case R 2492/2010-2, the BoA held that there was no likelihood of confusion between the tea
bags in the form of pyramids. In case R 806/2009-4, the BoA held that the confectionaries in
the shape of a golden rabbit with a red bow were dissimilar. It should be noted that the Court
of Justice later rejected a similar Lindt trademark that did not consist of the word element
“Lindt” on the side of the rabbit, due to a lack of distinctive character.225 In case R 1145/2006-
2, the BoA held that there was no likelihood of confusion between two bottles. The signs are
shown below:
Earlier Trademark Contested Trademark
220
T-24/08, paragraph 25, 27
221
I.c. Paragraph 24
222
I.c. Paragraph 31
223
I.c. Paragraph 31
224
All cases from Bøggild and Staunstrup (2015) p. 330
225
C-98/11 P, Lindt & Sprüngli v OHIM
36
In all of the cases above, the BoA compared the visual appearance of the marks and found that
the marks were dissimilar. In the bottle-case, the BoA noted that the scope of protection was
narrow, because the mark consisted of typical features for bottles. Thus, later bottle designers
did not have to change much to avoid infringing.226 These cases show that the scope of protec-
tion for three-dimensional trademarks is narrow, because they are considered to possess only a
minimal degree of distinctiveness.
I have not discovered any cases where the court has concluded that two three-dimensional
marks produce the same overall impression on the average consumer. However, the cases con-
cerning infringement of a previously registered trademark based on a likelihood of confusion
with a later design can be considered at this point. In case T-55/12, Su Chen (see section 4.2),
the court considered that there was a likelihood of confusion. Similarly, in case T-14/08 and T-
608/11, Beifa, the court found that there was a likelihood of confusion, because the differences
between the marks were secondary features, allowing for the purpose of a better grip.227 The
shapes are shown below.
Contested RCD Earlier German mark
This decision may be compared to the assessment of overall impression of designs. Similarly
to designs, the Court when assessing the likelihood of confusion between the trademark and the
later design did not consider the features of the mark that were solely technical features. When
these features were excluded from the visual comparison, the overall impression had to be con-
sidered the same.
5.2.5 Conclusions on the scope of protection of designs and three-dimensional

trademarks
As discussed in section 5.2.2.1, the assessment of “overall impression” should set the bar higher
for the court to determine that there has been an infringement of a design, compared to an in-
fringement of a trademark. The reason being that the attention level of the relevant public differs
between trademarks and designs. The practice above however, shows that the assessment of
“overall impression” is highly similar for both trademarks and designs. In my opinion, it seems
that in the assessment of “overall impression” it is the nature of the product, which limits the
scope of protection, more than the relevant public’s perception. In both trademark- and design
226
R 1145/2006-2, paragraph 23
227
EUIPO case overview (2013) p. 131
37
cases, the courts compare the shapes visually. The shapes must be compared as a whole, while
excluding the technical features from consideration.
In the case of designs, standardized features impose a restriction on the designer’s degree of
freedom. 228 The greater freedom the designer has in developing the design, the less likely it is
that minor differences will be enough to produce a different overall impression on the informed
user.229 In some cases, as seen in the signboard decision, standardized features are not compared
at all in order to determine “overall impression”.230 By comparison, standardized features will
probably cause the trademark to be refused due to a lack of distinctiveness. If the mark has been
accepted despite of these common features, as seen in the bottle case from the BoA, the mark
will have a narrow scope of protection. This means that small differences will be enough to
result in a different overall impression.231 The only way to circumvent this narrow protection is
if the mark has no, or only a small relation to the goods or services it is registered for. This is
seldom possible when the mark consists of the shape of a product or its packaging. My hypoth-
esis is therefore that in order to choose between a trademark- or design registration, two factors
should be taken into account; (a) the level of distinctiveness of the mark, and (b) whether there
are factors that restrict the designer’s degree of freedom. The factors may be considered as a
scale. The higher the level of distinctiveness of the trademark is, the wider the scope of protec-
tion will be. This is true for all trademarks. Similarly, the larger the designer’s degree of free-
dom is, the wider the scope of protection will be.
From the referenced case law, there seems to be no clear evidence to support the argument that
registering a shape as a three-dimensional trademark instead of protecting the shape as a design
gives better protection for the shape. Given the limited number of cases from the courts, this
conclusion is in no way absolute. However, the scope of protection for three-dimensional trade-
marks is limited compared to other types of trademarks. This follows from the fact that these
types of marks are necessarily, due to their nature, closely linked to the goods and/or services
that they are registered for. Because of this, it does not seem that the protection of a shape as a
three-dimensional trademark offers a wider scope of protection than a design registration after
all. The only exception is in the cases where the shape is unrelated to the goods or services. In
those cases trademark protection should in theory offer the widest scope of protection, because
of the attention level of the average consumer compared to the informed user.
228
T-41/14, Argo, paragraph 37 and 47-48
229
T-525/13, H&M v OHIM – Yves Saint Laurent, paragraph 29.
230
I.c.
231
R 1145/2006-2, paragraph 23
38
6 Advantages and disadvantages of three-dimensional EU
trademarks and community registered designs
6.1 Duration of protection
If a three-dimensional trademark is finally accepted, the protection is virtually everlasting. Pro-
vided that the registration is renewed by paying a renewal fee every 10 years, and that the mark
is used for the registered goods and/or services the registration can last forever.232 This is a great
selling point in favour of using the trademark institute. By comparison, a design registration
has a maximum duration of 25 years from the date of filing, provided the registration is renewed
every five years, cf. CDR art 12.
However, most designs do not need more than 25 years of protection in order for the designer
to exploit the economical value of the shape233. If the design is still in use after 25 years, and
the owner of the design still wishes to use the design, nothing stands in the way of applying for
a trademark at this time. Waiting 25 years before registering the design as a trademark also
brings the added advantage of giving the owner 25 years to use the mark. After 25 years it is
easier to prove that the mark has acquired distinctiveness.234 For the mark to show acquired
distinctiveness it must be known throughout the European Union. (see point 2.1.1.1).
6.2 Opposition period

When a trademark is accepted and published by the EUIPO, it goes into a three month opposi-
tion period.235 During this period the owner of an earlier registration can oppose to the mark
being finally accepted due to a likelihood of confusion with the previous mark. After this three
month period the registration is valid. In comparison, only the formalities of a design applica-
tion are checked by the registration office. The only way to test whether the design in question
complies with the requirements set forth in CDR is if the design is contested. This is both an
advantage and a disadvantage of the trademark system. On one hand, there is security in know-
ing that the registration is valid. On the other hand, many registrations will never be contested.
As such there is security in knowing that the registration exists, even if it is only tested if the
registration is contested.
232
Carboni (2006) p. 260
233
Carboni (2006), p. 260
234
Mewburn Ellis Intelletual Property (2016)
235
Bøggild and Staunstrup p. 45
39
6.3 The requirements for obtaining protection
Even though three-dimensional shapes can be registered per se in the EU-system, they hardly
ever are. The protection of three-dimensional trademarks has been possible in most of the Eu-
ropean countries for several years. For example trademark protection of shapes has been possi-
ble since 1971 in the Netherlands,236 Even so, the EU-courts still in most cases consider that
the public is less likely to denote commercial origin from a shape.237 With this in mind, most
applications for three-dimensional shapes are denied because of a lack of distinctiveness238. In
addition, the practice concerning three-dimensional marks becomes more stringent the higher
one gets in the EU-system.239 If the mark is refused in the EUIPO due to a lack of distinctive-
ness, it is unlikely that the decision will be overturned on appeal. Registering a 3D-mark solely
based on the marks inherent distinctiveness may prove to be an expensive route then, given the
added expenses with involving lawyers or courts in order to contest a refusal from the office.
As long as the design is novel, the bar for a design to be considered individual is lower than for
a trademark to be considered distinctive. A design may be registered as a trademark only when
it functions as a badge of origin.240 In comparison, a design is considered individual due to the
unique outer appearance and aesthetic appeal.241 As shown above in section 5, there is not nec-
essarily any correlation between the bar for obtaining protection and the scope of protection
that is obtained. The scope of protection for designs is largely determined by the designer’s
degree of freedom, and when this is high, the scope of protection for designs is quite high. In
many cases, this means that choosing to register the shape as a design is a much easier route
than a trademark registration, because the requirements are easier to overcome.
6.3.1 Exceptions on the exclusive rights of designs

Unlike the EUTM, the Design Regulation offers some limitations to the exclusive rights con-
ferred by the rights holder, cf. art 20 (1). A registered design may still be used (a) privately, for
non-commercial purposes, (b) for experimental purposes or (c) reproduced for citations or of
teaching. The exception raises the biggest concerns with regard to 3D-printing, but I will not
examine this question for the purpose of this thesis.242 In addition art. 20 (2) the exclusive right
of a design cannot be enforced in respect of equipment on ships and aircrafts which temporarily
enter the territory of the Community. However, I do not believe that these exceptions results in
a big retrenchment of the designer’s exclusive rights in comparison to trademarks. Thus, I will
236
AIPPI 2000 p. 99
237
Max Plank Institute (2011) p. 68
238
Soutol and Bresson (2009) p. 7
239
240
Hartwig (2010) p. 20-23
241
I.c.
242
40
not examine these limitations to the exclusive rights any further, but simply note that these
limitations are not reflected in the EUTMR.
6.4 Would-be three-dimensional trademarks

Most three-dimensional marks are registered on the basis of acquired distinctiveness or because
it contains other elements, such as distinctive words. In the latter situation, it is often only these
other distinctive elements that the mark is actually given protection for. From this last point it
follows that even if a 3D-mark is registered, it may not actually have obtained any protection
for the shape243. What the mark is given protection for may then seem unclear. Whether the
shape is protected will only be put to the test in a later infringement action. One such example
is the chocolate rabbit mentioned above in section 5.2.4. In case R 806/2009-4, the BoA noted
that the visual similarity between the marks was low, mainly because both marks contained
verbal elements that were considered distinctive.244 When the Lindt rabbit was sought registered
without the word element, the mark was refused due to a lack of distinctiveness.245 This means
that even if the rabbit had been registered as a three-dimensional trademark, the shape was not
protected.
In some cases though, an additional distinctive element might provide protection for a shape
that might otherwise have been denied due to lack distinctiveness. In the case Su-Chen v OHIM-
AM Denmark (see section 4.2) the earlier three-dimensional trademark had been registered with
a small word element, “am”.246 Even so, the General Court only compared the shapes of the
RCD and CTM. The Court considered that the word element “am” would be ignored by the
relevant consumer.247 In reference to this decision, it has been suggested that some three-di-
mensional trademarks may overcome the barrier of distinctiveness by adding small distinctive
pieces to the trademark.248 In other words, the registered three-dimensional trademark may in
some cases gain protection of the shape, even when the shape itself is not distinctive, because
only the shape is considered in a later infringement proceeding. However, this will probably
only hold true if the distinctive pieces are small and easy to overlook, as was the case in the Su-
Chen decision.
243
Viefhues and Stelzenmüller (2012)
244
R 806/2009-4, paragraph 19
245
C-98/11 P, Lindt & Sprüngli
246
Clark (2014) p. 106-108
247
Clark (2014) p. 106-108
248
I.c.
41
7 Conclusion: What protection should be chosen?
Already on the onset of this conclusion it should be mentioned that if the design has been made
available to the public, a design protection cannot be granted. If this is the case the only possible
route to registration is a trademark application. If the shape has not previously been disclosed
to the public, three options remain; (i) to file a trademark application, (ii) to file a design appli-
cation, or finally (iii) to file both a trademark and design application.
When considering which form of protection should be chosen, several different factors may be
taken into account. For example, the time and cost of filing the application. A design application
is both cheaper and more time efficient in itself compared to a trademark application. In addition
a design application may spare the costs of lawyers and courts, because the requirements of
novelty and individual character are not immediately examined by the office. In comparison,
many three dimensional trademarks are refused due to a lack of distinctiveness, or because of
the exclusions in EUTMR art. 7 (1) (e). The time and costs associated with getting the decision
overturned may be high. Because of this, the time and cost of a three-dimensional trademark
may be higher compared to other types of trademarks.
The expected time that the shape is to be in use for, may be taken into consideration. In many
cases a trademark registration is not necessary in order to exploit the commercial value of a
design. Fashion products for example, are seldom used more than 25 years.249 If the design is
intended by be used for more than 25 years, the trademark route might be the best option. There
is nothing precluding a design from being registered as a trademark after its been in use. For
this reason, it is often strategic to first register the shape as a design and wait a few years before
applying for a trademark. Not all trademarks last more than 25 years. There are a number of
reasons for this, the trademark may be changed or updated in the course of 25 years, or the
business may no longer exist. In addition, by waiting some time before registering the design
as a trademark, the shape may have acquired distinctiveness through use, by the time of the
application.
The most important factor to consider when choosing a design- or three-dimensional trademark
registration is the scope of protection. In section 5 I have examined the scope of protection in
depth. It has been suggested that trademark protection offers a wider scope of protection com-
pared to a design registration. The reason is that the overall impression must be determined in
relation to the relevant public’s perception. However there seems to be no case-law that clearly
supports this argument.
249
Carboni (2006) p. 263
42
My hypothesis is that the decision between a trademark- or design registration should be based
on (a) the level of distinctiveness of the mark, and (b) whether there are factors that restrict the
designer’s degree of freedom. All the marks were the BoA considered that there was no likeli-
hood of confusion in section 5.2.4. were closely related to the goods or services for which they
were registered. In such cases, it does not seem that a trademark application offers a wider scope
of protection compared to designs. The only theoretical exception is where the shape is unre-
lated to the goods or services in question. No such cases have been raised before the court.
However, in those cases, the scope of protection may be higher for trademarks than for designs
because of the attention level of the average consumer compared to the informed user.
The question that remains is whether there are occasions where the shape should be registered
as both a design and a trademark. There is little practice on which type of protection is the most
extensive. Because of this insecurity, the applicant may wish to play it safe by applying for both
a trademark and a design. This will allow for the rights-holder to pick the one that suits its needs
the best.250 In the future then, if there is more clarification on the subject, the rights-holder is
safeguarded against restrictions in either system.251
In conclusion, there seems to be few clear advantages of registering a design as a trademark.

With the exception of obtaining a potentially everlasting registration when choosing to register
the shape as a trademark, a design registration is less expensive, the requirements for obtaining
protection are significantly easier to overcome, and the scope of protection conferred under the
two systems seems not to vary to a great extent. With this in mind, a pressing question rises, is
there any place for these registration of three-dimensional marks all?
It seems evident, that the question of the advantages of registering a shape as a three-dimen-
sional trademark is in desperate need of clarification by law makers in the EU. If the two sys-
tems should continue to co-exist and overlap, there needs to be clarifications into the question
of what the registration of a design as a trademark entails. Except for the exclusion of certain
types of shapes set forth in EUTMR art. 7 (1) (e), there is no applicable law, or case law which
clarifies when a shape is better suited to be a trademark compared to when the shape is best
suited to be registered as a design. The status quo of the current system seems to entail that
choosing to register a design as a trademark offers no clear advantages to the rights holder
compared to a design. If no clarification is offered by the law makers in the EU, there seems to
be very little place for the registration of three-dimensional trademarks at all.
250
Torremans (2008) p. 685
251
I.c.
43
In conclusion, the shape of a product or its packaging are best suited to be registered as a design.
Only if it is still in need of protection and meets the requirements after the 25 years of design
protection has passed is there any clear reason for choosing a trademark registration. This way
of artificially prolonging the life of a design has been criticized by many. However, there is no
ban on this practice. Further, there seems to be evidence to suggest that a three-dimensional
mark is more easily approved if the mark can show acquired distinctiveness. 25 years of exclu-
sive rights give plenty of time for the mark to become known within the community.
44
8 References
8.1 EU-legislation
Council Regulation (EC) No 207/2009 Council Regulation (EC) No 207/2009 of 26 Feb-
ruary 2009 on the European Union trade mark
(Trademark Regulation)
Regulation (EU) 2015/2424 Regulation (EU) 2015/2424 of the European Par-
liament and of the Council of 16 December 2015
amending Council Regulation (EC) No 207/2009
on the Community trade mark and Commission
Regulation (EC) No 2868/95 implementing
Council Regulation No 40/94 on the Community
trade mark, and repealing Commission Regula-
tion (EC) No 2869/95 on the fees payable to the
Office for Harmonization in the Internal Market
(Trade Marks and Designs) (Amending Regula-
tion)
Directive 2008/95/EC Directive 2008/95/EC of the European parliament
and of the council of 22 October 2008 to approx-
imate the laws of the Member States relating to
trade marks (Trademarks Directive)
Council Regulation (EC) No 6/2002 Council regulation (EC) No 6/2002 of 12 Decem-
ber 2001 on Community designs amended by
Council Regulation No 1891/2006 of 18 Decem-
ber 2006 amending Regulations (EC) No 6/2002
and (EC) No 40/94 to give effect to the accession
of the European Community to the Geneva Act of
the Hague Agreement concerning the interna-
tional registration of industrial designs (Design
Regulation)
Directive 98/71/EC Directive 98/71/EC of the European Parliament
and of the Council of 13 October 1998 on the le-
gal protection of designs. (Designs Directive)
45
8.2 Table of cases:
8.2.1 Court of Justice practice

C-251/95, SABEL v Puma, Rudolf Dassler Sport, ECLI:EU:C:1997:258
C-210/96, Gut Springenheide and Tusky v Oberkreisdirektor des Kreises Steinfurt,

ECLI:EU:C:1998:369
C-39/97, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer, ECLI:EU:C:1998:442
C-342/97, Lloyd Schuhfabrik Meyer and Klijsen Handel BV, ECLI:EU:C:1999:323
C-108/97 and C-109/97, Joined cases, Windsurfing Chiemsee Produktions- und Vertiebs
GmbH, ECLI:EU:C:1999:230
C-299/99, Koninklijke Philips Electronics NV v Remington Consumer Products Ltd

ECLI:EU:C:2002:377
C-53/01 to C-55/01, Joined cases, Linde and Others, ECLI:EU:C:2003:2016
C-136/02 P, Mag Instrument v OHIM, ECLI:EU:C:2004:592
C-363/99, Koninklijke KPN Nederland (Postkantoor), ECLI:EU:C:2004:86
C-218/01, Henkel, ECLI:EU:C:2004:88
C-329/02 P, SAT.1 v OHIM, ECLI:EU:C:2004:532
C-456/01 P and C-457/01, Joined cases, Henkel KGaA v Office for Harmonization in the In-
ternal Market, ECLI:EU:C:2004:258
C-37/03 P, BioID v OHIM, ECLI:EU:C:2005:547
C-173/04, Deutsche SiSi-Werke v OHIM, ECLI:EU:C:2006:20
C-24/05 P, Storck v OHIM, ECLI:EU:C:2006:421
C-361/04 P, Ruiz-Picasso and others v OHIM, ECLI:EU:C:2006:25
C-371/06, Benetton Group SpA v G-star International BV, ECLI:EU:C:2007:542
C-48/09 P, Lego Juris v OHIM, ECLI:EU:C:2010:516
C-281/10 P, PepsiCo v Grupo Promer Mon Graphic, ECLI:EU:C:2011:679
46
C-344/10 P and C-345/10 P, Joined cases, Frexinet v OHIM, ECLI:EU:C:2011:680
C-53/11 P, OHIM v Nike International, ECLI:EU:C:2012:27
C-98/11 P, Chocoladefabriken Lindt & Sprüngli v OHIM, ECLI:EU:C:2012:307
C-205/13, Hauck GmbH & Co v Stokke A/S and Others, ECLI:EU:C:2014:2233
C-421/12, Apple Inc. V Deutsches Patent. Und Markenamt, ECLI:EU:C:2014:2070
8.2.2 Opinions, Court of Justice

Opinion– Case C-299/99, Philips v Remington, ECLI:EU:2001:52
Opinion- Case C-205/13, Hauck v Stokke, ECLI:EU:C:2014:322
8.2.3 General Court practice

T-122/99, Procter & Gamble v OHIM (Forme d’un savon), ECLI:EU:T:2000:39
T-30/00, Henkel v OHIM (Image d’un produit detergent), ECLI:EU:T:2001:223
T-128/01, DaimlerChrystler Corporation v OHIM (Calandre), ECLI:EU:T:2003:62
T-305/02, Nestlé Waters France v OHIM (Forme d’une bouteille), ECLI:EU:T:2003:328
T-410/07, Jurado Hermanos v OHIM (JURADO), ECLI:EU:T:2009:153
T-148/11, Beifa Group v OHIM – Schwan-Stabilo Schwanhäußer (Instrument d’écriture),

ECLI:EU:T:2010:190
T-153/08, Shenzhen Taiden v OHIM Bosch Security Sustems (Équipement de communication),

ECLI:EU:T:2010:248
T-24/08, Weldebräu v OHIM – Kofola Holding (Forme d’un bouteille à goulot hélicoïdal),
ECLI:EU:T:2010:71
T-9/07, Grupo Promer Mon Graphic v OHIM – PepsiCo (Représentation d’un support promo-
tionell circulaire), ECLI:EU:T:2010:96
T-10/08, Kwang Yang Motor v OHIM – Honda Giken Kogyo (Moteur à combustion interne
avec ventilateur sur le dessus), ECLI:EU:T:2011:466
T-508/08, Bang & Olufsen v OHIM (Représentation d’un haut-parleur), ECLI:EU:T:2011:575
T-399/12, Cosma Moden v OHMI – s. Oliver Bernd Freier (COSMA), ECLI:EU:T:2013:294
T-55/12, Su Chen v OHIM-AM Denmark (Dispositif de nettoyage), ECLI:EU:T:2013:219
T-608/08, Beifa Group v OHIM – Schwan-Stabilo Schwanhäußer (Instrument d’écriture),

ECLI:EU:T:2013:334
47
T-80/10, Bell & Ross v OHIM – KIN (Montres), ECLI:EU:T:2013:214
T-15/13, Group Nivelles v OHIM – Easy Sanitary Solutions (Canivau d’évauation de douche),
ECLI:EU:T:2015:281
T-377/12, Spa Monopole v OHIM – Olivar Del Desierto (OLEOSPA), ECLI:EU:T:2015:121
T-41/14, Argo Development and Manufacturing v OHIM – Claplanner (Représentation d’arti-

cles publicitaires), ECLI:EU:T:2015:53
T-525/13, H&M Hennes & Mauritz BV & Co. KG v OHIM – Yves Saint Laurent SAS,
ECLI:EU:T:2015:617
T-411/14, the Coca-Cola Company v OHIM (Forme d’un bouteille à contours sans cannelures),
ECLI:EU:T:2016:94
8.2.4 Boards of Appeal practice

R1145/2006-2, The Coca-Cola Company v REWE-Zentral AG, https://euipo.eu-
ropa.eu/eSearchCLW/#basic/*///number/1145%2F2006-2 [accessed 03.11.2016]
R2492/2010-2, Tea Forté, Inc. v Dr. Dünner AG, https://euipo.europa.eu/eSearch-
CLW/#basic/*///number/2492%2F2010-2 [accessed 03.11.2016]
R690/2007-3, Lindner Recyclingtech GmbH v Franssons Verkstäder AB, https://euipo.eu-
ropa.eu/eSearchCLW/#basic/*///number/690%2F2007-3 [accessed 03.11.2016]
R806/2009-4, Chocoladefabriken Lindt & Sprüngli AG v TERRAVITA Spólka z o.o.
https://euipo.europa.eu/eSearchCLW/#basic/*///number/806%2F2009-4 [accessed
03.11.2016]
8.2.5 EUIPO registrations

EUTM no. 525048, Daimler Chrystler car grille https://euipo.europa.eu/eSearch/#de-
tails/trademarks/000525048
EUTM no. 6481659, Docking station https://euipo.europa.eu/eSearch/#details/trade-
marks/006481659
EUTM no. 922179, Nestlé water bottle https://euipo.europa.eu/eSearch/#details/trade-
marks/000922179
8.2.6 Practice from other EU-states

England and Wales Court of Appeal (Civil Division) Decisions, EWCA/Civ/2007/936, The
Procter & Gamble Company v Reckitt Beckinser (UK) Limited,
http://www.bailii.org/ew/cases/EWCA/Civ/2007/936.html [Accessed 04.11.2016]
48
8.3 Books
Bøggild, Frank and Staunstrup Kolja, EU-varemærkeret, 1. Edition 2015
Leistner, Derclaye and Leistner, Matthias, Intellectual Property Overlaps: a European perspec-
tive, 2011
Nemes, Allan S and Carboni, Anna, in: Overlapping Intellectual Property Rights, Edited by
Neil Wilkof, Samnad Basheer, 2012
Russel-Clarke and Howe, Martin, Russel-Clarke and Howe on Industrial Designs, 7th edition
2005
Suthersanen, Uma, Design Law in Euorope, 2000
Thorning, Louise Christina and Finnanger, Solvår Winnie, Trademark Protection in the Euro-
pean Union with a Scandinavian View, 1. Edition, 2010
Torremans, Paul, Festskrift til Marianne Levin, p. 659-685, 2008
8.4 Reports
AIPPI, Executive Committee Sorrento 2000 (April 9-15, 2000), Yearbook 2000/II
EUIPO, Overview of GC/CJ Case-law 2013, https://euipo.europa.eu/tunnel-web/secure/web-
dav/guest/document_library/contentPdfs/news/Yearly_Overview_2013_external.pdf
[Accessed 18.11.2016]
EUIPO, Facts and Figures 2015, https://euipo.europa.eu/tunnel-web/secure/web-
dav/guest/document_library/contentPdfs/about_euipo/annual_report/facts_and_fig-
ures_2015_en.pdf [Accessed 12.10.2016]
For the European Commission, Legal review on industrial design protection in Europe, car-
ried out by Time.lex, Spark, Queen Mary Univerity of London and Indi.gov, 2016
http://ec.europa.eu/growth/tools-databases/newsroom/cf/itemdetail.cfm?item_id=8845
Max Planck Institute for Intellectual Property and Competition Law, Study on the Overall
Functioning of the European Trade Mark system, 15.02.2011. http://ec.europa.eu/in-
ternal_market/indprop/docs/tm/20110308_allensbach-study_en.pdf [Accessed
12.10.2016]
8.5 Articles
Addleshaw Godard LLP, ECJ gives guidance on registration of KIT KAT shape mark, 2015
https://www.addleshawgoddard.com/globalassets/insights/intellectual-property/ecj-
gives-guidance-on-registration-of-kit-kat-shape-mark.pdf [Accessed 04.10.2016]
Carboni, Anna. “The overlap between registered Community designs and Community trade
marks”, Jounal of Intellectual Property Law & Practice, 2006, Vol. 1(4) p. 256-265
From Oxford Journals, http://jiplp.oxfordjournals.org/content/1/4/256 [Accessed
12.10.2016]
49
Cendrowicz, Leo. “Lego celebrates 50 Years of Building”. TIME Magazine, 28.01.2008,
http://content.time.com/time/world/article/0,8599,1707379,00.html [Accessed
18.11.2016]
Conea, Alina Michaela, “The requirements for protection of Community Design”, Lex et Sci-
entia, International Journal Vol I 2011 p. 129-143. From HeinOline.
https://vpn1.uio.no/+CSCO+0h756767633A2F2F79726B7267667076726167766E2E6
861766961672E6562++/archive/ [Accessed 12.10.2016]
Clark, Birgit, “Keeping it clean: invalidity of a registered Community design based on likeli-
hood of confusion with earlier 3D Community trade mark”, Journal of Intellectual
Law & Practice, 2014 Vol 9(2) p. 106-108, From Oxford Journals,
https://vpn1.uio.no/+CSCO+1h756767633A2F2F77766379632E626B7362657177626
865616E79662E626574++/content/9/2/106.full [Accessed 05.09.2016]
Fels, Niklas, “Trade mark protection for product packaging remains a hot topic”, Bird&Bird
&Brand Writes, p. 2-3, 26.05.2016 http://www.twobirds.com/~/media/pdfs/news/arti-
cles/2016/brandwrites-may-2016.pdf?la=en [Accessed 18.11.2016]
Gindrat, François “UEFA’s Battle for its Brand” WIPO Magazine Vol 2 2012 p. 30-34.
http://www.wipo.int/wipo_magazine/en/2012/02/article_0008.html [Accessed
12.10.2016]
Gielen, Charles, “Substantial value rule, how it came to be and why it should be abolished”
European Intellectual Property Review, 2014 Vol. 36(3) p. 164-169. From Wastlaw.
uk.
https://vpn1.uio.no/+CSCO+1h756767633A2F2F79627476612E6A726667796E6A2E
70622E6878++/maf/wluk/app/document?access-
method=toc&src=toce&docguid=I0834DEA0926D11E38DA8999EF41581A2&crum
b-action=append&context=3 [Accessed 25.10.2016]
Hartwig, Henning, “Can designs and Brands co-exist in harmony?” 2010, P. 20-23 “Brands in
the Boardroom” From iam-magazine.com: http://www.iam-media.com/Intelli-
gence/Brands-in-the-Boardroom/2010/Features/Can-designs-and-brands-co-exist-in-
harmony [Accessed 12.10.2016]
Headdon, Toby, “Community design right infringement: an emerging consensus or a different
overall impression?”, European Intellectual Property Review, August 2007, Vol 29(8),
p. 336-339, From Westlaw.uk.
https://vpn1.uio.no/+CSCO+1h756767633A2F2F79627476612E6A726667796E6A2E
70622E6878++/maf/wluk/app/document?access-
method=toc&src=toce&docguid=I525786A02B5311DCA0A5F0FD76367280&crumb
-action=append&context=3 [Accessed 18.11.2016]
Mewburn Ellis Intelletual Property, European Union Trade Mark or Community Design?,
2016, http://mewburn.com/wp-content/uploads/2016/03/European-Union-Trade-Mark-
or-Community-Design.pdf
50
Smyth, Darren, “How is the scope of protection of a registered Community Design to be de-
termined?”, Journal of Intellectual Law&Practice Vol 8, no 4 2013 p 270-272. From
Oxford University Press.
865616E79662E626574++/content/8/4/270.full.pdf+html [Accessed 12.10.2016]
Soutoul, Franck and Bresson, Jean-Philippe, “3D trademarks under French and Community
Practice”, WIPO Magazine, 1/2009, p. 7-9 http://www.wipo.int/ex-
port/sites/www/wipo_magazine/en/pdf/2009/wipo_pub_121_2009_01.pdf [Accessed
18.11.2016]
Stone, David “A mixed year for EU Design Cases”, Managing Intellectual Property, 2015,
Vol 246 p 10-13. From HeinOnline.
https://vpn1.uio.no/+CSCO+0h756767633A2F2F6A6A6A2E75727661626179766172
2E626574++/HOL/-CSCO-3h--Page?handle=hein.journals/manintpr246&id=12&col-
lection=journals&index=journals/manintpr [Accessed 04.11.2016]
Stone, David and Dvies, Philip, “Another case of handbags at dawn: General Court rules out
mathematical approach to assessment of overall impression”, Jounal of Intellectual
Law & Practice, 2016, Vol 11 issue 1 January 2016, page 14-15. From Oxford Jour-
nals
865616E79662E626574++/content/11/1/14.full [Accessed 16.11.2016]
Tordoir, Florence V.M, “European design protection – worth your money?”, IAM yearbook
2016 – Building IP value in the 21st century. http://www.iam-media.com/intelli-
gence/IAM-Yearbook/2016/Europe/European-design-protection-worth-your-money-2
[Accessed 12.11.2016]
Viefhus, Martin and Stelzenmüller, Ursula. “European Union: “Shape & Device Marks” and
“Would-be 3D Marks””. INTABulletin, Vol. 67(5), 01.03.2012, http://con-
tent.time.com/time/world/article/0,8599,1707379,00.html [Accessed 18.11.2016]
8.6 Internet resources

CURIA, General Presentation [of the Court of Justice], http://curia.eu-
ropa.eu/jcms/jcms/Jo2_6999/en/ [accessed 12.10.2016]
EUIPO, Boards of Appeal, 03.08.2015 https://euipo.europa.eu/ohimportal/en/boards-of-ap-
peal [Accessed 12.10.2016]
EUIPO, Boards of Appeal, 03.08.2015, https://euipo.europa.eu/ohimportal/boards-of-appeal
[Accessed 03.11.2016]
EUIPO, Coming into force 21 months after publication of the Amending Regulation,
07.07.2016 https://euipo.europa.eu/ohimportal/en/eu-trade-mark-regulation-tech-
nical [accessed 03.11.2016]
51
EUIPO, Facts and figures 2015, https://euipo.europa.eu/tunnel-web/secure/web-
dav/guest/document_library/contentPdfs/about_euipo/annual_report/facts_and_fig-
ures_2015_en.pdf [Accessed 16.11.2016]
EUIPO, Fees and Payments, (for designs) 17.03.2015 https://euipo.europa.eu/ohimpor-
tal/en/rcd-fees-and-payments [Accessed 12.10.2016]
EUIPO, Fees and payments, (for trademarks), 06.04.2016 https://euipo.europa.eu/ohimpor-
tal/fees-and-payments [Accessed 12.10.2016]
EUIPO, Guidelines for examination of Registered Community Designs, Examination of De-
sign Invalidity Applications, 23.03.2016, https://euipo.europa.eu/tunnel-web/se-
cure/webdav/guest/document_library/contentPdfs/law_and_practice/designs_prac-
tice_manual/WP_2_2016/examination_of_design_invalidity_applications_en.pdf
[Accessed 18.11.2016]
EUIPO, Draft Guidelines, Guidelines for Examination of European Union Trade Marks,
Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 6, Shapes or
other Characteristics Resulting from the nature of the goods, with an essentially
technical function or substantial value, Article 7(1)(e) EUTMR, 01.02.2017
https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/con-
tentPdfs/trade_marks/Draft_Guidelines_WP_1_2017/10_part_b_examination_sec-
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Design as a trademark

Leveringsfrist: 25. november 2016

Antall ord: 16 827

2 THE EU-SYSTEM FOR THE PROTECTION OF THREE-DIMENSIONAL

3 THE EU-SYSTEM FOR THE PROTECTION OF DESIGN ................................. 17

4 INVALIDITY DUE TO CONFLICT BETWEEN A EU TRADEMARK AND A

5 SIMILARITIES AND DIFFERENCES BETWEEN DESIGNS AND THREE-

6 ADVANTAGES AND DISADVANTAGES OF THREE-DIMENSIONAL EU

7 CONCLUSION: WHAT PROTECTION SHOULD BE CHOSEN?...................... 42

1.1 Thesis theme and legal issue

1.3 Definition of terms

Any additional terms will be defined consecutively throughout the thesis.

1.4 Source of law

2 The EU-system for the protection of three-dimensional

2.1 Conditions for obtaining protection

The distinctiveness of a three-dimensional trademark must be assessed by considering the mark

2.1.1.1 Acquired distinctiveness through use.

2.1.3 Grounds for refusal under art. 7 (1) (e)

2.1.3.1 The nature of the goods themselves

2.1.3.2 Necessary to obtain a technical result

2.1.3.3 Substantial value to the goods

2.1.3.3.1 The current situation

2.2 Examination of shape marks

1. Shapes unrelated to the goods and services themselves

3 The EU-system for the protection of design

3.1 Conditions for obtaining protection

3.1.2 Individual character

3.1.3 Technical function exclusion

3.2 The multiplicity of forms theory

3.2.1 Visibility and complex products

3.3 Examination of designs

4 Invalidity due to conflict between a EU trademark and a

4.1 Source of law and the relevant public’s perception

The earlier three-dimensional trademark151:

5 Similarities and differences between designs and three-

5.1 Similarities and differences with reference to the application process

5.1.1 The application process

5.2.2 The overall impression

5.2.2.2 Determining the overall impression of trademarks

5.2.3 Scope of protection of designs

5.2.3.1 Same overall impression

T-337/12, Design of a corkscrew (Only available in French)

5.2.3.2 Different overall impression

5.2.4 Scope of protection of trademarks

5.2.5 Conclusions on the scope of protection of designs and three-dimensional

6.2 Opposition period

6.3.1 Exceptions on the exclusive rights of designs

6.4 Would-be three-dimensional trademarks

In conclusion, there seems to be few clear advantages of registering a design as a trademark.

8.2.1 Court of Justice practice

C-210/96, Gut Springenheide and Tusky v Oberkreisdirektor des Kreises Steinfurt,

C-39/97, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer, ECLI:EU:C:1998:442

C-342/97, Lloyd Schuhfabrik Meyer and Klijsen Handel BV, ECLI:EU:C:1999:323

C-299/99, Koninklijke Philips Electronics NV v Remington Consumer Products Ltd

C-53/01 to C-55/01, Joined cases, Linde and Others, ECLI:EU:C:2003:2016

C-136/02 P, Mag Instrument v OHIM, ECLI:EU:C:2004:592

C-363/99, Koninklijke KPN Nederland (Postkantoor), ECLI:EU:C:2004:86

C-218/01, Henkel, ECLI:EU:C:2004:88

C-329/02 P, SAT.1 v OHIM, ECLI:EU:C:2004:532

C-37/03 P, BioID v OHIM, ECLI:EU:C:2005:547

C-173/04, Deutsche SiSi-Werke v OHIM, ECLI:EU:C:2006:20

C-24/05 P, Storck v OHIM, ECLI:EU:C:2006:421

C-361/04 P, Ruiz-Picasso and others v OHIM, ECLI:EU:C:2006:25

C-371/06, Benetton Group SpA v G-star International BV, ECLI:EU:C:2007:542