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The case of Benetton Group SpA v G-Stae International BV (Case C-371/06) [2007], concerned questions relating to the distinctive character of a mark for which Community Trade Mark protection was sought. According to Article 3 of First Council Directive (EEC) 89/104, so far as material:

"(1) The following shall not be registered or if registered shall be liable to be declared invalid: ... (e) signs which consist exclusively of ... [third indent] the shape which gives substantial value to the goods ... (3) A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character. Any Member State may in addition provide that this provision shall also apply where the distinctive character was acquired after the date of application for registration or after the date of registration."

The defendant was in the business of clothing manufacture and marketing, and was the registered proprietor of two shape marks in respect of trousers. The distinctive elements of the marks included sloping stitching from hip height to crotch seam and kneepads.

The defendant brought an action to prevent the claimant from marketing trousers in the Netherlands on the basis that the claimant had violated the defendant's trade marks by duplicating those distinctive elements in its trousers. The claimant subsequently counter-claimed for the annulment of the trade marks.

At second instance, the national court found that the trade marks had been infringed. The court was of the opinion that the defendant had conducted extensive advertising campaigns to give its trousers, which had specific characteristics, recognition as one of its products. As a result, the reputation of those trousers was largely attributable not to the aesthetic attractiveness of the shape, but to the attractiveness resulting from recognition of the trade mark.

The claimant appealed against this decision. The proceedings were paused and a number of questions were referred to the Court of Justice of the European Communities for a preliminary ruling.

The first question essentially asked whether the use made of a sign referred to in the third indent of Article 3(1)(e) prior to the application for registration was capable of enabling it to be registered as a trade mark or of precluding its invalidity.

The court held that the third indent of Art 3(1)(e) was to be interpreted as meaning that the shape of a product which gave substantial value to that product could not constitute a trade mark under Art 3(3) where, prior to the application for registration, it had acquired attractiveness as a result of its recognition as a distinctive sign following advertising campaigns presenting the specific characteristics of the product in question.

Article 3(3) did not refer to the signs that came within the Article 3(1)(e) for the purposes of establishing the extent of the exception. Furthermore the court held that a shape refused registration under Article 3(1)(e) could in no circumstances be registered by virtue of Article 3(3) and could never acquire a distinctive character for the purposes of Article 3(3) by the use made of it.

RT COOPERS, 2007. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.

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