ABSTRACT
This chapter aims to understand which factors are driving the refusal of registration of 3D marks in Europe with a view to commenting on whether the approach to 3D marks gives rise to significant competition concerns. Given the fact that the Article 7(1)(e) ground was originally included in the Regulation as a competition-saving measure for 3D marks, it might be assumed that it should play the leading role in the refusal of registration of such marks. However, the provision has been criticised as difficult to understand. The scope of the natural shape exclusion remains murky. Also, evidencing technical function or substantial value can be complicated, requiring technical expertise and evidence gathering. It is evident from the CJEU’s case law that lack of distinctiveness also plays an important role in relation to the registrability of product shapes. Thus, this research seeks to determine whether it is functionality or lack of distinctiveness that is playing the more prominent role in the refusal of registration. This is particularly important given that the Max Planck Institute, in its 2011 report on the trade mark system argued that the substantial value exclusion in particular could be abandoned as the same result would be achieved by employing the distinctiveness and descriptiveness exclusions. Thus, this research seeks to determine the extent to which these two provisions overlap with 3D shape marks being refused on both functionality and on distinctiveness grounds …
Simon, Ilanah, An Empirical Study of the Basis of Refusal of EU Trade Marks for 3D Marks (July 18, 2022) in Forthcoming, Estelle Derclaye (ed), Research Handbook in Empirical Intellectual Property (Edward Elgar).
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