Three-dimensional mark

A three-dimensional mark is a trade mark consisting of the shape of a product or of its packaging, represented on the register by a three-dimensional image or by several views. Article L. 711-1 of the French Intellectual Property Code expressly admits the shape of a product or of its packaging among the signs capable of constituting a trade mark, as does Article 4 of Regulation (EU) 2017/1001. Its protection nonetheless faces two obstacles of its own, the requirement of a distinctive character that a shape rarely satisfies and the exclusions aimed at functional or aesthetic shapes.

The distinctive character of the shape

The criteria for assessing distinctive character are in law the same as for other marks. The Court of Justice of the European Union holds, however, that the average consumer is not in the habit of presuming the origin of a product from its shape or packaging, in the absence of any word or graphic element, so that only a shape which departs significantly from the norms or customs of the sector fulfils its function of indicating origin. A bottle, a flask or a tablet whose shape merely varies the usual shapes on the market will therefore be refused, unless distinctiveness acquired through use can be established.

The exclusion of functional shapes

Article L. 711-2 IPC and Article 7 of Regulation (EU) 2017/1001 exclude from protection signs consisting exclusively of the shape, or another characteristic, which results from the nature of the goods themselves, which is necessary to obtain a technical result or which gives substantial value to the goods. These exclusions cannot be overcome through use. Their purpose is to prevent trade mark law, which is indefinitely renewable, from conferring a monopoly over technical solutions or aesthetic features that only patents and designs can protect for a limited time. The shape dictated by technical function is found wherever the essential characteristics of the shape perform a technical function, even if other shapes would achieve the same result.

Filing and defending the title

The filing must represent the shape precisely, from several angles if necessary, and state that the mark is three-dimensional. The applicant has every interest in building a file of use from the outset, with surveys, sales volumes, advertising spend and instances of the sign appearing alone, in order to be able to demonstrate acquired distinctiveness. In defence, an invalidity attack for lack of distinctiveness or for a functional shape is systematic, and the owner must also prove genuine use of the shape as a trade mark, that is, as an indication of origin and not as the mere appearance of the product. Cumulation with a design and with copyright remains possible where the conditions specific to each are met.

Key points

The shape of a product or of its packaging may be filed as a trade mark, but it is protected only if it departs clearly from the shapes of the sector and is neither functional nor dictated by the nature of the product or by its aesthetic value. Reserve this filing for truly emblematic shapes, accompany it with a registered design for new shapes, and gather from launch the evidence that the shape is perceived as a sign of origin.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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