The registrability of 3D marks under art. 3(1)(e) of the Harmonization Directive is subject to the evidence that the sign does not consist exclusively of a shape imposed by the nature of the goods, of a shape of goods, which is necessary to obtain a technical result or of a shape which gives substantial value to the goods.

The standard has been set by the ECJ (case C-299/99, Philips v. Remington of 18 June 2002). In Phillips, the ECJ ruled that Article 3(1)(e) pursues an aim which is in the public interest, namely that a shape whose essential characteristics perform a technical function and were chosen to fulfill that function may be freely used by all. This provision prevents such signs and indications from being monopolized by one undertaking alone because they have been registered as trademarks (ground 82). The ECJ furthermore held that Article 3(1)(e), second indent, of the Directive must be interpreted to mean that a sign consisting exclusively of the shape of a product is unregistrable pursuant to that Article, if it is established that the essential functional features of that shape are attributable only to the technical result. Moreover, the ground for refusal or invalidity of registration imposed by that provision cannot be overcome by establishing that there are other shapes that allow the same technical result to be obtained (ground 84).

In a recent case regarding a bottle containing liquid detergent for wool (ECJ 12 February 2004, C-218/01, Henkel) the ECJ ruled that three-dimensional (3D) marks, consisting of the packaging of a product, which for reasons related to the nature of the goods (no intrinsic shape) are put on the market in a packaged form, the packaging of the goods is to be considered equivalent to the shape of the goods in the meaning of Article 3(1)(e) (ground 37). The exception of Article 3(1)(e) has an absolute character. It applies even if a 3D sign has (acquired) distinctive character. If a 3D sign passes the test of Article 3(1)(e), its distinctive character still needs to be proven before it can be registered (Article 3(1)(b)). The same goes for the other absolute grounds for refusal of Article 3(1)(c) and (d) (ECJ 8 April 2003, C-53/01 to C-55/01, Linde, ground 45). The criteria for assessing the distinctive character of 3D trademarks are no different from those to be applied to other categories of trademarks (Philips, ground 48 and Linde, ground 49). However, in practice it appears to be more difficult to prove distinctiveness due to the fact that 3D trademarks are less capable of distinguishing goods or services than word or figurative trademarks (Linde, ground 48).

In Henkel (ground 52) the ECJ adds that only a trademark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin, is not devoid of any distinctive character. As it did in Libertel, the ECJ stresses the public interest that all 3D shape of product trademarks, which consist exclusively of signs or indications which may serve to designate the characteristics of the goods or service within the meaning of Article 3 (1)(c), should be freely available to all (Linde, ground 77).

In conclusion, if one of the absolute grounds of refusal of 3D marks applies, the sign is unregistrable, even if it has acquired distinctive character. These absolute grounds of refusal cannot be overcome by establishing that with other shapes the same technical result can be obtained. Once the test of art. 3(1)(e) is passed, the applicant still needs to prove that the mark has actually acquired distinctive character before it can be registered.

However, this situation is criticizable...