Europe: Is 3D trade mark protection in the EU still realistic?

February 24 2016

Especially in recent years, trade mark owners and their representatives have been confronted with the difficulties of having their clients' 3D trade marks registered with their national office or OHIM.

We have mirrored the application procedures and technicalities for 3D marks and case law and comments on tools that may increase the chances of acceptance of your (client's) 3D trade mark application.

1. Indication of the type of trade mark on the application form: naming a 3D mark "logo" or "device" on the application form to avoid a refusal won't help. When the depiction as filed looks like a 3D product, OHIM will treat it as a 3D trade mark application and will apply the criteria for this type of mark (referring to the Storck and Louis Vuitton cases).

2. Including a description in the trade mark application: although it may limit the scope of protection, it may help to clarify the elements for which protection is sought and is therefore recommended.

3. Using a limited list of goods and services rather than an elaborate list: this option may certainly increase the chances of success as we know from practice from other non-traditional trade marks such as colour marks.

4. Including word elements in the application form: when the applicant for a logo or 3D mark opts for naming the word elements in the mark, these are visible in the subject line of the application. An argument not to list word elements, even when they are visible on the 3D trade mark application, is that the subject line will state "Trade mark without text", which emphasises the 3D character of the mark. On the other hand, especially when a distinctive word element is not that visible and no words are listed on the form, the examiner may overlook this and issue a refusal.

5. Adding a colour, graphic element or word element: adding a single colour to a shape will probably not prevent a refusal, adding a distinctive graphic or word element will.

6. Depictions in the application: OHIM allows the applicant to provide up to six depictions of the shape, whereas it is not required to provide a view of each side. This enables leaving out a side that can be perceived as, for example, purely technical/functional, thereby decreasing the chances of a refusal. Furthermore, it might be advisable to include a (distinctive) word or graphic element on the shape, while applying for the shape including a depiction on which that word or graphic element is not dominant.

7. Owner name details: a large multinational owner name may (indirectly) impress the examiner and have him accept the application sooner. On the other hand, when the applicant is known as an innovator or design winning or ultra technical company, it may trigger the examiner to refuse an application.

The tools may help to have your (client's) 3D trade mark application accepted. It is however interesting to learn how this practice will evolve when the New Regulation comes into force, as for example the article on the grounds for refusal for 3D marks (technical function, value of the goods) becomes stricter when extended to part of the product as well.