considered, for example, that the breakable characteristic and overall shape of the LEXOMIL pill did not fulfill a technical function.
The shape of a product or a product’s packaging are eligible as trademarks. French and Community trademark provisions concur in listing them as signs that may constitute trademarks. However, in practice, distinctiveness and the desire to produce a technical effect remain the most frequent grounds for refusal of 3D trademarks.
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The distinctiveness test
The distinctiveness requirement is the very first reason for rejection of three-dimensional trademarks. Distinctiveness is largely raised by Community examiners, whose view is much stricter than in the French approach.
The OHIM usually considers that average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or their packaging. The more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the more the shape will be devoid of any distinctive character as a Community trademark.
Consequently, in Community practice, it proves more difficult to establish distinctiveness in relation to three-dimensional trademarks than in relation to verbal or figurative marks. In fact, very few three-dimensional Community trademarks have directly and immediately matured into registration. For most of the marks, official actions were taken for lack of distinctiveness. Refusals were overcome for a limited number of them only.
Registration of 3D signs was obtained only in cases where the sign offered a particularly high degree of distinctiveness and/or when long and extensive use could be demonstrated as giving the mark its distinctiveness on the market. This was the case for the bottle of Contrex water or the Band & Olufsen loudspeakers.
The strict approach of the OHIM, against “bare” 3D signs, can obviously be avoided by adding verbal or graphic elements to the mark.
The technical function test
Under French law and Community Regulations, three-dimensional signs whose basic function is to perform a technical function are not acceptable for registration of a trademark.
French and Community case law considers that the technical function must be analyzed by focusing on the sole mark involved, without examining whether the same result can be achieved through one or several other shapes.
However, the requirement in France is less stringent than in Community practice. It was
From the OHIM perspective, the segments in the shape of a medication for which registration as a Community trademark is sought are regularly regarded as fulfilling a « technical » (use and ingestion) function, that prevents the consumer from taking the shape of the pill as an indication of commercial origin of the pill, and thus excludes such marks from a possible registration.
When applying the technical function test, the French Trademark Office and Courts as well as the OHIM consider the sign in a holistic approach. The European Court of Justice confirmed the partial cancellation of the 3D trademark for the Lego brick, holding that the addition of non-essential characteristics having no technical function was irrelevant, as the overall shape already pursued that purpose.
The monopoly “taste”
The strict approach taken by the OHIM in the examination of a sign can also be observed when it comes to assessing the likelihood of confusion between 3D trademarks. As an example, the Board of Appeal denied likelihood of confusion between two trademarks consisting of bottle shapes, taking the view that the differences between the signs were sufficient to consider that the applicant mark remained outside the scope of protection of the opponent’s prior right.
Turning now to the French approach, certain Courts refuse to admit the notion of monopoly, so as to avoid ending up protecting a genre. While regarding as distinctive a 3D trademark in the form of a conical foie gras block, the Paris Court of Appeal denied trademark infringement as claimed by the owner against a competing product, on the grounds that applying the trademark’s right would have meant protecting a genre, and the specific shapes and external look of the products involved showed sufficient overall differences to prevent any possible confusion.
As a rule, it is necessary to first make a case-by-case analysis, so as to assess any possible lines of action and follow the most suitable strategy.
 See for example: OHIM, Fourth Board of Appeal, November 19, 2008, Case No. R 804/2008-4.
 European Court of First Instance, November 12, 2008, Case No. T-270/06.
 OHIM, Second Board of Appeal, May 14, 2007, R 1145/2006-2
 Paris Court of Appeal, June 25, 2008