Supreme Court rules on protection of three-dimensional trademarks

On 29th October 2009 the Supreme Court issued Decision 22929/09 regarding an appeal filed against a decision of the Italian Trademark Office refusing registration of a three-dimensional trademark. Application MI2003C012062, filed on 4th December 2003 for “lighting apparatus” in Class 11, was for a lamp described in detail in the application and shown in the following drawings.

Together with the application, the applicant filed evidence to support the extensive use of the lamp since 1987, claiming that it had in any case acquired distinctiveness.

The Patent Office refused the application due to a lack of distinctive character.

The Trademark Office Board of Appeals confirmed the refusal. According to the board's interpretation of Article 18C of the Trademark Law (now Article 9 of the IP Code):

it is not possible to register as a trademark signs which are exclusively constituted by the form imposed by the nature itself of the product to obtain a certain technical result.

Furthermore, the decision stated that the lamp presented peculiar aesthetic features which, according to Article 18C, further justified the denial of registration as a trademark for a sign allegedly composed by a form giving substantial value to the product.

Finally, the board confirmed that the Patent Office had correctly not taken into account the claimed acquisition of a “secondary meaning” because, according to Article 19 of the Trademark Law, the rule concerning registrability based on distinctiveness acquired through prior use is applicable not to three-dimensional signs, but rather only to word marks according to Article 18B.

In its decision the Supreme Court recognised the validity of the applicant’s arguments against the board's decision. The court declared that Article 18C foresees three types of unregistrable sign:

  • signs composed exclusively of the form imposed by the nature of the product itself;
  • signs exclusively representing the form necessary to achieve a technical result; and
  • signs in a form giving a substantial value to the product.

The Supreme Court clarified that the first two groups should be examined separately. In support of this interpretation, the court recalled that the same criteria have been recognised by several decisions of the European Court of Justice (ECJ). Article 3(1)B of the EU Trademarks Directive (89/104/EEC) is identical to Article 18 of the Trademark Law, and in various decisions the ECJ has indicated that the distinctive character of a three-dimensional trademark should be examined on the one hand with respect to the products or services for which registrations is requested, and on the other on the basis of the expectation of the interested sector. In particular, the Supreme Court referred to the decision in Henkel (C456/01 and C457/01), in which the ECJ stated that “the reasons for refusal to registration are independent one from each other and request separate examination”.

Therefore, the Supreme Court upheld the appeal and ordered the Patent Office Board of Appeals to carry out a fresh examination on the registrability of the three-dimensional application. It also stated that in case the three-dimensional trademark was not considered to be registrable under Article 18C, its registrability should in any case also be examined according to the provision dealing with secondary meaning (Article 13 of the IP Code).

The Supreme Court's decision, establishing in detail the steps and criteria for the examination of three-dimensional trademark applications, is important, as previous Trademark Office practice in this area has been highly restrictive in examining trademarks other than traditional word and device trademarks.

This is an Insight article, written by a selected partner as part of IAM's co-published content. Read more on Insight

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