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TMA 1994 S3(2)

A sign shall not be registered as a trade mark if it consists exclusively of
(a) the shape which results from the nature of the goods themselves,

(b) the shape of goods which is necessary to obtain a technical result, or

(c) the shape which gives substantial value to the goods.


Audi v OHIM

  • Slogans cannot be excluded under s3(1)(b) just because they convey an objective message
  • originality and resonance making a slogan easier to remember are not determinative but can point to slogan being distinctive


OHIM v Erpo Mobelwerk

  • No additional criteria or derogations for slogan trade marks when assessing distinctiveness under s3(1)(b)
  • However, it may be harder to establish distinctiveness in relation to slogans
  • A mark can be both a promotional formula and indicator of origin (and hence perform essential function)


TMA 1994 S1(1)

  • A "trade mark" means:
    • any sign
    • capable of being represented graphically
    • capable of distinguishing goods or services of one undertaking from those of other undertakings
  • May in particular consist of words, designs, letters, numeral or the shape of goods or their packaging


Henkel KGaA v OHIM

[Dishwasher tablet case]

  • Criteria for distinctiveness is the same for shapes but average consumers not in habit of assessing origin based on shape so distinctiveness harder to establish
  • Only shape departing significantly from the norm will fulfil essential function and hence not be devoid of distinctive character (TMA 1994 s3(2)(b))
  • Similar conclusion reached in Mag Instrument


Future development of shape exceptions

  • Under new TMD, the shape exceptions apply to other characteristics too


Philips v Remington

  • Relates to signs which consist exclusively of shape necessary to technical result under TMA 1994 S3(2)(b)
  • Shapes not excluded merely because it has functional characteristics as policy reason is to prevent trade marks from being used to prevent competitors from freely offering products incorporating such technical solutions in competition with the proprietor of the trade mark
  • It does not matter if there are other shapes available that achieve the same result
  • Where essential functional characteristics of shapes are attributable solely to technical result, this precludes registration even if other shapes can achieve that


Public policy underlying s. 3(2) TMA 1994

  • Public interest in preventing monopolization of functional characteristics of products which a user is likely to seek in the product of competitors
  • Prevent exclusive and permanent right of trade marks serving extend indefinitely the life of other time limited rights


 Koninklijke KPN Nederland and Benelux-Merkenburea

in relation to

descriptive terms exclusion (TMA 1994 s3(1)(c)

[Postkantoor case]

  • If trade  mark  for  which registration is sought currently represents, in the mind of the relevant class of  persons,  a  description  of  the characteristics  of  the  goods  or  services concerned or whether it is reasonable to assume that that might be the case in the future, then registration should be refused
  • It is irrelevant whether there are other more usual signs/indications for denoting these characteristics
  • Whether number of competitors interested in using the sign is also irrelevant


Red Bull v EUIPO

  • Red Bull attempted to claim protection in two marks for:
  1. combination of blue and silver in proportions of approximately 50%-50%
  2. these two colours applied in equal proportion and juxtaposed to each other
  • Red Bull attempted to argue that 'juxtaposition' was not an arbitrary combination (which had been said to be disallowed in Heidelberge),
    • the court rejected this argument, there were still a large number of different forms
  • Red Bull attempted to argue that written description requirement for colour combination marks was not in the law,
    • the court rejected this argument as they said the graphic representation did not enable the subject matter of the protection to be defined
  • Red Bull atempted to argue written description requirement violated principle of equal treatment between different types of marks:
    • court rejected this saying discrimination can arise only through the application of different rules to comparable situations or application of same rule to different situtatoins
    • higher precision of written description is required because of intrinsically less precise nature of colour per se marks so different treatment is justified in this case


Glaxo v Sandoz

  • Glaxo attempt to register a mark for inhalors consisting of colour dark purple applied to a significant proportion of an inhaler and colour light purple applied to the remainder, used this description alongside a picture of the inhaler
  • Found not to be trade mark-able as:
    • written description allowed for limitless possibilities
    • the description and picture were not congruent, and neither should take precedence
    • so representation did not meet Sieckmann criteria 


Benetton Group v G-Star International

  • Interpretation of s3(2)(c) - TMA1994
  • Shape of product that gives substantial value to goods still cannot be registered where, prior to registration, it acquired attractiveness as a distinctive sign following advertising campaigns presenting these specific characteristics


SAT.1 Satelliten Fernsehen GmbH v OHIM

'SAT.2' case

  • Each ground under TMA s3(1) is separate and requires separate examination
  • Combination can have distinctive character even if all elements alone lack it
  • Policy of terms for designating characteristics being free to use is relevant to S3(1)(c) but not to S3(1)(b)


Libertel v Benelux

in relation to

Colour Distinctiveness

  • Colour and TMA 1994 s3(2)(b)
  • Colour per se is not usually capable of distinguishing goods/services of undertaking
  • Distinctiveness of colour without prior use is inconceivable without exceptional circumstances, which are:
    • mark is claimed for very restricted set of products/services
    • the relevant market is very specific
  • Colour may however acquire distinctiveness
  • General interest of keeping colours free should be taken into account


Nestle v Cadbury


Technical result exclusion only applies to how the goods function and not to how they're manufactured.


Shape in question was easier to manufacture and it was questioned whether this would be a technical result


Campina Melkunie BV v Benelux-Merkenbureau

[BIOMILD case]

  • Mere combination of descriptive elements remains itself descriptive even if the combination creates a neologism as it is capable of being used as a descriptive term to denote characteristics of goods
  • For neologism to not be descriptive, there must be a perceptible difference between the neologism and the sum of its parts 
  • Irrelevant whether or not there are synonyms which could be used


Bang & Olufsen v OHIM

  • Interpretation of TMA 1994 s3(2)(c)
  • If design is element that will be very important to consumer's choice, and design significant increases the appeal of the goods in question then design adds substantial value to the goods so excluded
  • Policy reason is to avoid TMs being used as infinite design protection



  • Principles for assessing TMA s3(1)(b) for compound marks:
    • distinctiveness of each individual element can be assessed but  assessment must be based on overall perception of the trade mark
    • just because all of the elements considered separately are devoid of distinctive criteria does not mean the mark as a whole is
    • overall impression determined by dominant element of the mark
    • in this case, styilised BioID was devoid of distinctive character, term was not distinctive and abbreviation was still dominant element
  • However, that the term is or could commonly be used in trade does not matter for s3(1)(b)!!!


Hauck v Stokke

in relation to

TMA 1994 S3(2)(a) exclusion

  • Public interest in excluding registration of shapes with essential characteristics which are inherent to the generic function or functions of the relevant goods
  • If marks for these were granted, it would exclude competitors giving products necessary shape to compete


Sony Ericsson Mobile

Movement marks are capable of distinguishing goods or services (so theoretically registrable) where a reasonably observant person with normal levels of perception and intelligence would, upon consulting the [EUTM] register, be able to understand precisely what the mark consists of, without expending a huge amount of intellectual energy and imagination


OHIM v WM Wrigley Jr. Company


It is not necessary for term to actually be being used as a descriptive term for exclusion under s3(1)(c) to apply, it is sufficient that the term could be used for that purpose


Koninklijke KPN Nederland and Benelux-Merkenbureau (CJEU)

  • Assessment of capability of distinguishing goods/services under TMA 1994 S1(1) is to be performed in abstract without reference to the relevant goods/services
  • In this case, it was found that there was no reason to find that 'Postkantoor' (post office) was not, in respect to certain goods/services, capable of guaranteeing the identity of the origin of the marked goods/services (even if this was not the case in relation to the goods/services in question, in this case postal goods)



Procter & Gamble Company v OHIM

[Baby-dry case]

  • Signs and indications s3(1)(c) should not be refused registration unless it comprises no other signs/indications than descriptive ones and the purely descriptive signs or indications of which it is composed are not presented or configured in a manner that distinguishes the resultant whole from the usual way of designating goods
  • On this basis, 'BABY-DRY' was found not to be excluded under this provision due to its syntactically unusual juxtaposition 


Hauck v Stokke

in relation to

TMA 1994 S3(2)(c) exclusion

  • Concept of shape which 'gives substantial value to the goods' is not limited to shapes having only artistic or ornamental value as otherwise there is a risk that products having essential functional characteristics as well as a significant aesthetic element will not be covered
  • So, hybrid aesthetic/technical shapes covered by this provision
  • Factors to take into account in assessing whether substantial value added:
    • the nature of the category of goods concerned
    • the artistic value of the shape in question
    • its dissimilarity from other shapes in common use on the market
    • a substantial price difference in relation to similar products exist
    • development of a promotion decision focusing on aesthetic elements of the goods


Lego Juris v OHIM

  • Relates to TMA 1994 s3(2)(b)
  • Confirmed approach taken in Philips that alternative designs are immaterial as:
    • TM proprietor can prohibit use of similar as well as identical signs
    • single undertaking could register multiple shapes achieving same result and have monopoly over all possible shapes
  • Test for assessing whether the shape is necessary to obtain a technical result is:
    • identifying the essential characteristics:
      • "most important elements of the sign"
      • analysis on a case-by-case basis
      • assessment based on overall impression
    • examine the functionality of the essential characteristics
      • technical functionality may be assessed based on patents describing functional elements of shape concerned


Windsurfing Chiemsee

in relation to

Descriptiveness of Geographical Location

  • TMA s3(1)(c) does not preclude registration of geographical names which are:
    • unknown to the relevant class of persons
    • unknown as a designation of geographical origin
    • names which because of the type of place they designate mean it would be unlikely for people to believe the goods originated there
  • However, in the case of a lake, consumers could believe it referred to the shore/surrounding area so could be descriptive, or the consumer could believe the goods were conceived/designed there


CJEU Methodology for applying Absolute Grounds for Refusal in TMA 1994 s3(1)

  • Reiterate the public interest underlying the absolute ground
  • Reiterate legal test that implements the public policy consideration behind the absolute ground
  • Apply legal test to facts of the case in hand


Rewe Zentral v OHIM

  • Underlying policy ground of TMA s3(1)(b) is signs that are incapable of performing the essential function cannot be registered
  • Minimum degree of distinctiveness is enough to make this ground for refusal inapplicable
  • Mark should be assessed in relation to goods/services for which mark is being attempted to be registered and in relation to section of public targeted
  • Originality/invention are NOT important instead it's the ability to distinguish goods/services that matters
  • Case related to term 'LITE' which was found unregistrable on this ground