Jeans are Jeans (Benetton)

Report Headline

The European Court of Justice ("ECJ") has clarified that where the shape of an article gives that article substantial value and is therefore precluded from registration under Article 3(1)(e) of the Trade Marks Directive 89/104 (the "Directive"), it may not be registered as a trade mark according to Article 3(3) of the Directive, in circumstances where the article becomes recognised as distinctive following an advertising campaign.

The Parties

Benetton Group SpA v G-Star International BV

The Citation

C – 371/06

The Tribunal

The European Court of Justice.

The Context

Article 3(1)(e)of the Directive precludes the registration of trade marks which consist exclusively of the shape which gives substantial value to the goods.
Article 3(3) of the Directive allows the registration of trade marks which prior to the date of application for registration have acquired distinctiveness based on use made of the trade mark applied for.

The Facts

G Star BV designs and manufactures jeans and is the owner of two Benelux trade marks for jeans and their stitching, registered in class 25. G Star relied on the registrations to bring a claim in the Dutch Courts for infringement of its registered trade marks. Benetton counterclaimed that the trade marks were invalid on the basis that the shapes gave substantial value to the trade marks and therefore ought not to have been registered. Benetton argued that unlike other characteristics of trade marks which although precluded from registration by Articles 3(1)(a)-(d) of the Directive may be overcome by a demonstration of acquired distinctiveness, the prohibition in Article 3(1)(e) may not be overcome by demonstrating acquired distinctiveness.

The Dutch national Court asked the ECJ to consider whether Benetton's analysis of the law was correct or whether the prohibition could be overridden where the attractiveness of the article concerned could be determined predominantly by reference to its recognition as a distinctive sign. If so, the ECJ was asked to further consider the extent to which the attractiveness must prevail to overcome the objection.

The Decision

The ECJ referred to the earlier decision in Case C-229/99, Philips in which the ECJ held that in the context of Article 3(3) of the Directive, signs which are prohibited from registration by Article 3(1)(e) cannot acquire distinctiveness by virtue of their use for the purposes of registration of a trade mark, even where, as in the current case, the advertising of the product necessarily drew attention to the specific characteristics of the product in question.

Comment

This is a useful clarification of the operation of the prohibition in Article 3(1)(e) of the Directive which unlike the prohibitions in Articles 3(1)(a) – (d) may not be overcome by a demonstration of acquired distinctiveness. It also usefully upholds the earlier Phillips decision.