ECJ Confirms Stance on Shape Trade-Marks

Europe's top court, the European Court of Justice (ECJ), has clarified that the shape of a product cannot constitute a trade-mark. G-Star International BV (G-Star) had successfully registered two trade-marks on the shape, stitching and cuts of some of its jeans. Benetton Group SpA (Benetton) allegedly sold jeans that infringed G-Star's marks. When G-Star sued for infringement, Benetton counter-claimed to have the trade-marks cancelled. The dispute made its way through local courts to the Dutch Supreme Court, which then requested the ECJ to clarify the law regarding shape marks. Although the relevant provisions of the EC Trade Mark Directive appeared to prohibit the registration of a trade-mark for a shape, there had been some conflicting interpretations by a subsidiary jurisdiction (the Benelux IP Office) where a shape may have acquired distinctiveness. The Dutch Supreme Court asked the ECJ whether Article 3(3) of the Directive applied to save the shape marks because they may have acquired a distinctive character during advertising campaigns prior to registration. The European Court of Justice held that it did not. Referring to its earlier decision in a case involving Royal Philips Electronics, the ECJ held that Article 3(3) applies only to registerable trade-marks, and cannot be used to save a sign that is otherwise unregisterable under Article 3(1). For links to the full decision, visit this site and follow the link under "ruling" to Case No C-371/06: http://www.managingip.com/Article.aspx?ArticleID=1445777&LS=EMS143231 For other E-TIPS® articles relating to shapes and trade-mark law, follow this link: http://dww.local/?s=shape+trade-mark+summary&x=0&y=0 Summary by: James Kosa