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Thursday, 18 January 2018

Swedish Patents and Market Court of Appeal requests CJEU to clarify notion of ‘shape, or another characteristic, which gives substantial value to the goods’

The 'Manhattan' print
While trade mark professionals are keenly awaiting the outcome of the Louboutin reference [the case has been re-opened, and a new Opinion of Advocate General Szpunar, on which see here, is due on 6 February], the appeal branch of the specialist Swedish IP court has made a reference to the Court of Justice of the European Union regarding what is to be intended as ‘shape, or another characteristic, which gives substantial value to the goods’. 

The reference concerns Article 7(1)(e)(iii) of the 2009 EU Trade Mark Regulation as amended by Regulation 2015/2424 [now Regulation 2017/1001].


The reference has been made in the context of infringement and invalidity proceedings regarding EU trade mark (EUTM) ‘Manhattan’.

Svenskt Tenn is an interior design company, and has acquired a good reputation for its products. The company also notoriously collaborated with famed Austrian architect Josef Frank. The collaboration resulted in Mr Frank producing 2,000 furniture sketches and 160 textile prints, which are still marketed and sold by Svenskt Tenn. Among the textile prints, there is a pattern known asManhattan’.

Svenskt Tenn claims that the pattern that Mr Frank designed is an artistic work within the meaning of the Swedish Copyright Act, in which the company holds the copyright. Since 2012 the company has also owned the EUTM “Manhattan” (No 010540268), this being a figurative mark characterized by the colours blue, white, green, and red. The trade mark is, inter alia, registered in classes 21 and 16 of the Nice classification for: tissues and textiles (class 21); and table cloths, napkins posters, and graphic presses (class 16).

Textillis is a UK company that since 2013 has also sold and marketed textile prints through its online marketplace. Textillis has allegedly sold certain fabrics and textiles incorporating the pattern designed by Mr Frank. 

Josef Frank
Svenskt Tenn brought proceedings against Textilis on grounds of copyright and trade mark infringement. It argued that the Patents and Market Court (lower instance) should prohibit Textilis from selling the specific items and prohibit use of the Manhattan trade mark. In response to Svenskt Tenn’s application, Textillis argued that the Patents and Market Court should revoke registration of the 'Manhattan' trade mark. According to Textillis the reason for this was that Manhattan lacks distinctive character and that the sign is a shape that gives the product a substantial value, thus being ineligible for registration.

The Patents and Market Court (lower instance) found that it had not been demonstrated why the Manhattan trade mark should be revoked. In support of this, it held that the EU Trade Mark Regulation states that a EUTM may consist of all signs which can be represented graphically, including images, provided that they have distinctive character. In this regard, because pattern-like images can be registered as trade marks, the Court found that the elements represented in the Manhattan design are signs that are likely to attract trade mark protection. Furthermore, the Patents and Market Court found that the registration of the Manhattan trade mark did not entail a sign consisting of a shape. Thus, a trade mark could not be cancelled on the basis of the absolute grounds for refusal within Article 7(1)(e)(iii) of the Regulation.

The CJEU reference

The case was appealed to the Swedish Patent and Market Court of Appeal which decided [see also here] to stay the proceedings and refer the following questions to the CJEU [please note that the reference is not yet available on the Curia website so the translation from Swedish may not be accurate]:

1. Whether Article 4 of Regulation 2015/2424 means that the wording of what is now Article 7(1)(e)(iii) of the EU Trade Mark Regulation applies to invalidity proceedings brought after the entry into force of the new provisions but in relation to trade marks registered before that date;

2. Whether Article 7(1)(e)(iii) of the EU Trade Mark Regulation should be interpreted as meaning that its scope covers a sign consisting of the two-dimensional representation of a two-dimensional product, including a fabric; and

3. If the answer to question 2 is yes – how should the wording in Article 7(1)(e)(iii), “shape, or another characteristic, which gives substantial value to the goods", be interpreted? Would it cover a situation where the registration includes a variety of classes of goods and services and the sign in question could be applied differently to the various goods and services covered by the registration? 

The IPKat will follow this reference and reports on relevant updates in due course.

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