The IPKat has learnt of a new decision of the ECJ on functionality.
G-Star is the owner of a Dutch trade mark consisting of the shape and stitching of jeans. Benetton produced jeans similar to G-Star’s, and G-Star brought an infringment action. Benetton counter-claimed for invalidity, arguing that the shape in question gave substantial value to the goods and was therefore barred from registration. G-Star responded that the shape had acquired distinctiveness though an advertising campaign which pre-dated its registration.
The Hoge Ra’ad referred the following questions to the ECJ:
(1) Must Article 3(1)(e), third indent, [of the Directive] be interpreted as meaning that the prohibition contained therein permanently precludes the registration of a shape as a trade mark where the nature of the product is such that its appearance and shaping determine its market value entirely or substantially as a result of their beauty or original character, or does the prohibition not apply where, prior to the application for registration, the attractiveness of the relevant shape to the public has been determined predominantly by the recognition of it as a distinctive sign?
(2) If the answer to Question 1 is to the latter effect, to what extent must this attractiveness have prevailed for the prohibition no longer to apply?
The ECJ answered that a mark barred from registration under the third indent of Art.3(1)(e) cannot be registered in reliance on Art.3(3) if, prior to registration, the mark has acquired distinctive character through use. This was apparent from the facts that: (a) Art.3(1)(e) was not mentioned in Art.3(3) and (b) the ECJ had previously said in Philips v Remington that, under no circumstances could a mark barred under Art.3(1)(e) be registered by virtue of Art.3(3).
The ECJ’s approach makes the answer to the question look obvious. However, the referred question is a bit more subtle. How frequently will the shape of goods really be truly inherently attractive, and how often will be attraction just come from the fact that the goods are the latest ‘cool’ status symbol, that ‘coolness’ originating not from the inherent shape, but from the fact that the manufacturer has, through advertising, whipped up a a cult following? It would have been useful if the court had spent its time explaining the meaning of the third intent of Art.3(1)(e) (‘a sign which consists exclusively of the shape which gives substantial value to the goods’), but that wasn’t squarely in the referred questions, and will have to wait for another day.