The CJEU has confirmed in a preliminary ruling that the amended absolute ground for refusal and invalidity in Article 7(1)(e)(iii) of the EU Trade Mark Regulation – which refers to "signs which consist exclusively of … the shape, or another characteristic, which gives substantial value to the goods" – cannot be invoked against marks registered before 23 March 2016, when the amendment came into force.
Svenskt Tenn's figurative trade mark for the pattern MANHATTAN (EU 010540268) (above), filed and registered in 2012, therefore fell to be assessed under the previous formulation of Article 7(1)(e)(iii), which referred solely to "signs which consist … exclusively of the shape, which gives substantial value to the goods".
The CJEU considered – applying Case C‑163/16, Louboutin – that "shape" means "a set of lines or contours that outline the product concerned". The figurative mark MANHATTAN did indeed contain shapes in the form of outline drawings of parts of maps, but it also contained both decorative elements situated inside and outside those outlines and words.
Moreover, the two-dimensional decorative motifs that formed the mark were not indissociable from the shape of the goods (eg fabric or paper) on which the sign was affixed. The mark therefore could not be considered to be a "sign consisting exclusively of the shape" within the meaning of Article 7(1)(e)(iii).
The CJEU's refusal to apply the revised Article 7(1)(e)(iii) retroactively reflected its concern to observe the principles of legal certainty and protection of legitimate expectations. The Court noted that substantive rules of EU law should only be interpreted as having retroactive effect where such effect is clear from their terms, objective or general scheme.
It found that Regulation No 2015/2424, which amended Article 7(1)(e)(iii), did not contain any express provision that it should apply to trade marks registered before the amendment came into force. Although the CJEU judgment refers throughout to EU trade marks registered before 23 March 2016, this is likely to reflect the wording of the question put before it and does not necessarily preclude the same analysis applying to trade marks filed but not yet registered before that date.
The equivalent amendment to the absolute ground for refusal and invalidity in section 3(2)(c) of the UK Trade Marks Act came into force on 14 January 2019. The UKIPO has issued guidelines stating that it will apply the amended provision only to those trade mark applications filed on or after 14 January 2019. Although the guidelines are non-binding on UK courts, it seems likely that courts will follow the IPO and CJEU's approach of not applying the amendment retrospectively.
Case Ref: C-21/18
