A French first instance Court ruled on the impact of the dimensionality of a community trade mark as regards its validity. While this is not what one would call a milestone decision, it is however interesting to see how the mark was apprehended, and also because what is actually being discussed (even if it is not that obvious) is the capacity of this shape to fulfil the function of a trade mark . The case is Salvatore Ferragamo Italia vs. Comptoir Lux (TGI Paris 17 March 2010).

Salvatore Ferragamo, owner of the above depicted community trade mark, reproached Comptoir Lux of selling bags bearing an identical trade mark. As a matter of facts, the  mark at stake is registered as a 3D mark for products of classes 14, 18 and 25. In a counter claim, Comptoir Lux argued on the invalidity of the mark.

Comptoir Lux contended that the trade mark in question was not figurative but three-dimensional and therefore, considered that it should be cancelled for not being able to exercise its function, especially because the trade mark consists in a clasp with a technical function.

As regards the nature of the mark, the Court ruled that "the three-dimensionality of a mark is not a ground for nullity since it is not a criterion of Article 7 e) of the Regulation on the Community trade mark". The court also added: "the trade mark featured on the application is figurative : it represents a ring-shaped omega closed by a stem, but it is also a three-dimensional mark since the perspective view shows the mark by volume and therefore in three dimensions".

Thus, while the trademark was expressly registered as a 3D mark, the Court held it as a figurative mark too. Here, how can we not highlight the contrast with the Stabilo pen case (T-148/08, Beifa Group Co. Ltd v Office for Harmonization in the Internal Market, Schwan-Stabilo Schwanhaüßer GmbH & Co . KG - mentioned in its time on Class 46)?

The French Court then proceeded to verify the validity of the trade mark under Article 7 e) : the Court questioned the fact that the trade mark may have a shape which results from the nature of the goods themselves, or which is necessary to obtain a technical result, or which gives substantial value to the goods.

On the first of these three points, the Court noted that should the mark be a clasp, the choice of its shape is still totally arbitrary to designate the goods covered by the application (articles of precious metal, leather or imitation leather). Moreover, the Court ruled that "even if the trademark is sometimes used as a clasp, it is not [the representation of] a clasp that was filed as a trade mark, but a ring-shaped omega closed by a stem."

Then, the Court argued that "the fact that a mark which has no particular function or technical effect, might be diverted from its original function to obtain a technical function through its shape, does not conduct to its invalidity as its function as a mark is preserved." (note: the original French version is also confusing).

On the third point, the Court ruled that Comptoir Lux did not demonstrate how the shape of the trademark may give substantial value to the goods, "should the trademark have the shape of a clasp", the court oddly added.

One last argument was more interesting: according to the defendant, the consumer would only perceive the technical function of a clasp [when seeing the shape covered by the trade mark registration]. In other words (which are not those of the defender), would the consumer perceive the registered three-dimensional trade mark as a distinctive sign or as a mere technical part of a complex product?

Here again the court refused to follow the defender, considering that the owner of the mark "sometimes uses it as a clasp for hand bags and also sometimes as a buckle for straps or is simply affixed to the products".

 (pictures taken from trade mark owner web site, not part of the judgement)