Non-traditional trademarks, as opposed to traditional trademarks such as denominations, are part of the signs eligible to trademark protection under French and Community provisions. The practice however regularly shows that seeking protection for such non-traditional trademarks obeys to a specific approach. We are regularly monitoring the question with the view to identity the tendencies relating thereto. In this context, we provide below with the latest development which have drawn our attention in relation thereto both in terms of decisions and of applications refused to registration on the Registry.
I. Decisions on the French level
1. Court of Appeal of Paris, January 18, 2013 (JEAN EUGENE BORIE vs./ CHATEAU COUFRAN)
* EARLIER TRADEMARKS:
* CONTESTED TRADEMARK:
* The Court considered the earlier mark as valid given the specifc shade of color they protect and their long and continuous use. However, the Court denied the counterfeiteing of the earlier trademarks given the other word and graphic elements included in the contested mark which played a great role in the perception of the sign and which cannot be reduced to only a shade of color.
2.
Court of Appeal of Paris December 19, 2012 (SARAY BISKUVI GIDA SANAYI As vs c/ FERRERO spa)
* EARLIER TRADEMARKS OF FERRERO:
* SUED TRADEMARK OF THE TURKISH COMPANY:
* SUED SHAPES OF PRODUCTS: Roll Rex, Mac Chokels and Vagoon in particular sold under the following shapes
* The Court considered that the marks of any FERRERO are all distinctive by estimating that none of the packagings is imposed by the shape of the product. Instead, the marks are the results of arbitrary choices. Visual recognition tests are in this sense insofar the surveys show that people attribute the origin of the products at hands to FERRERO. The judge regarded the presence of the words ‘Roll Rex’, ‘Mc Chokels’ or ‘Vagoon’ displayed on the packagings as being an insufficient difference to destroy the overall visual impression revealing a counterfeit.
3.
Court of First Instance of Paris, June 26, 2012
* EARLIER TRADEMARK: 
* SUED TRADEMARK:
* For the Court, the earlier mark is distinctive in relation to goods for the air cooling. While the essence of pine can change the smell of a confined room, the reproduction of a drawing of a tree is only evocative of such products but is not descriptive of them. Although the shape of the tree is useful to allow the diffusion of the fragrance of the air freshener, another form was possible to get the same result, namely conical shape. Also the reputation of the earlier mark has been evidence through the certain level of knowledge among the public who makes a direct link between the sign and the mark.
II. Decisions on the Community level
1. General Court, January 18, 2013, Case T-137/12 (FunFactory GmbH vs / OHMI)
The Court upheld the decision to deny registration to the mark above covering in class 10 « Vibrator » by considering that the shape for which registration is sought does not diverge as significantly from the norm or habits of the sector in question and it cannot perform the essential function of a trade mark, namely that of identifying the origin.
2. General Court, March 22, 2013, Cases T-409/10 and 410/10 (Bottega Veneta International vs./ OHMI)
Bottega Veneta International applied for these 2 3D marks in class 18 in respect of “purses and handbags”. The General Court confirmed the previous findings of the OHIM (and of the Board of Appeal) by considering that the signs lacked distinctiveness since consumers are not in the habit to identify the shape of a bag as a function of origin and the shape is not uncommon on the purse market.
Bottega Veneta said that protection was sought not only for the shape of the purse but also for the “plaited surface of braided leather” aspect. However, as the Applicant had not specified the description of the aspect of the purse in its application as an element seeking CTM protection, this could be taken into account and Board of Appeal was not regarded as having committed a legal error justifying the cancellation of the decision.
3. General Court, September 19, 2012, T-164/11 (Redding GmbH vs / OHMI)
The Office cancels the above trademark which covers classes 6, 8 and 20 because the sign is regarded as being constituted by the shape which is necessary to obtain a technical result from the product. Indeed, the mark was filed after the expiry of a U.S. patent on the knife. It follows that OHIM registration of a trademark shall not be intended to extend the rights already expired. The mark is considered as having functional features and aesthetic resemblance to a dolphin are not sufficient to counterbalance them.
III. Other non-traditional trademarks with registration denie and worthy of note On the Community level
1. Color trademarks
N°010550317, filed on le January 10, 2012, class 11, in the name of Easy Sanitairy Solutions B.V.
N°010961076, filed on June 13, 2012, IN classes 31, 35 and 44, in the name of par Handelskwekerij Roma B.V.
N° 010839892, filed on April 26, 2012, in classes 7, 9, 11, 20, 21, 35, 37, in the name of Krëfel, naamloze vennootschap
N°010341253, filed on October 14, 2011, in classes 16, 41, 42, in the name of Deutsche Vereinigung für gewerblichen Rechtsschutz und Urheberrecht e.V.
N°010653707, filed on February 17, 2012, in classes 9, 37, 42, in the name par Elematic Oy Ab
2. 3D trademarks
N°010409126, filed on November 11, 2011, in class 30, by Dr Gerard Sp. z o.o.
N° 010345478, filed on October 17, 2011, in classes 3 and 33, in the name of Vitronex sp. z o.o.
N° 010345536, filed on October 17, 2011, in classes 3 and 33, also in the name of Vitronex sp. z o.o.
N ° 010832517, filed on April 24, 2012, in classes 6 et 20, in the nsame of System 180 GmbH
N° 010923449, filed on May 30, 2012, in class 3, in the name of VALOREM CAPITAL ONE LIMITED
N° 010976017, filed on June 19, 2012, in class 18, in the name of Fenix Outdoor AB
N° 010734358, filed on March 16, 2012, in class 20, in the name of HIP Innovations, LLC
N° 010388122, filed on November 3, 2011, in class 11, by Steinel GmbH
N° 010318905, filed on October 6, 2011, in class 11, by Hatco Corporation
N° 010319002, filed on October 6, 2011, in class 11, also in the name of Hatco Corporation
N°010508141, filed on December 19, 2011, in classes 16, 20, 21, 32 in the name of YETIGEL INTERNATIONAL (S.A)
N° 010423655, filed on November 17, 2011, in class 12 in the name of Thule Sweden AB
N° 010809218, filed on April 16, 2012, in classes 20 and 24, in the name of CARAVANE
N° 010648749, filed on Feburary 16, 2012, in class 29, in the name of Valio Fresh Fleischvertriebs-GmbH & Co. KG
N° 010596583, filed on January 27, 2012, in class 10, in the name of AMOR Gummiwaren GmbH
N° 010595676, filed on January 16, 2012, in class 5, in the name of K-fee System GmbH
N°010669588, filed on February 23, 2012, in classe 21 and 33, in the name of REMY COINTREAU LUXEMBOURG S.A.
There are plenty of other non-traditional trademarks that can be considered so as to be part for a trademark strategy and with the view to fit new needs of the market. The allowance of movement marks to registration on the Community level is the best illustration. Stay tuned as we will further report new developments arising on non-traditional trademarks.