The matter at hand
This matter deals with the question of whether Article (7)(e)(iii) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark, which precludes the registration of trade marks consisting exclusively of a ‘shape’ which gives substantial value to the goods, solely applies to trade marks representing three-dimensional shapes or also to trade marks representing two-dimensional goods.
The trade mark in question was a figurative mark representing a fabric pattern, registered for furniture and textiles. The trade mark was registered before the entry into force of Trade Mark Regulation 2015/2424 on 23 March 2016, which broadened the scope of Article (7)(e)(iii) of Trade Mark Regulation 207/200 to ‘the shape, or another characteristic’ which gives substantial value to the goods.
In these circumstances, the referring court, the Svea hovrätt, Patent- och marknadsöverdomstolen (Svea patent and trade mark court of appeal, Stockholm), wanted to know whether Trade Mark Regulation 2015/2424 is applicable to trade marks registered before the entry into force of this regulation and, if not, whether a sign consisting of two-dimensional decorative motifs constitutes a ‘shape’ within the meaning of Article (7)(e)(iii) of Trade Mark Regulation 207/200.
The Judgment of the ECJ
The ECJ recalls that “in order to ensure the observance of the principles of legal certainty and the protection of legitimate expectations, the substantive rules of EU law must be interpreted as applying to situations existing before their entry into forces only in so far as it clearly follows form their terms, objectives or general schema that such effect must be given to them” (paragraph 30).
Applied to the present case, the ECJ establishes that Trade Mark Regulation 2015/2424 does not contain any provision expressly providing that the amended Article (7)(e)(iii) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark is applicable to EU trade marks registered before that date, and that it is also not apparent from the purpose or scheme of that regulation that the EU legislature intended to confer such retroactive effect. The ECJ concludes that, consequently, Trade Mark Regulation 2015/2424 does not apply to trade marks registered before its entry into force.
With regard to the second question, the ECJ recalls, citingLouboutin(C-163/16), that “the concept of ‘shape’ is usually understood as a set of lines or contours that outline the product concerned” (paragraph 36). According to the ECJ, this is not the case here, as “it cannot be held that a sign consisting of two-dimensional decorative motifs is indissociable from the shape of the goods where that sign if affixed to goods, such as fabric or paper, the form of which differs from those decorative motifs” (paragraph 42). In addition, the ECJ emphasises that the fact the motifs may also be protected by copyright, has no bearing on whether the sign consists exclusively of a ‘shape’ within the meaning of Article (7)(e)(iii) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark.