Article 2.1 para. 2 (old) Benelux Convention on Intellectual Property (BCIP) stipulates that signs that consist exclusively of a shape that is necessary to obtain a technical result cannot be regarded as trade marks.
With regard to goods that do not have an intrinsic shape and can only be marketed in packaged shape – such as liquids – the packaging gives shape to the goods. In those cases, this packaging must be equated with the shape of the product, so that this packaging is the shape of the product (CJEU, C-218/01 Henkel ECLI:EU:C:2004:88, paras. 33 and 37).
The existence of alternatives that can achieve the same technical result does not set aside the technology exception.
With regard to imitation of material goods that are no longer protected by an absolute intellectual property right, imitation of such goods is in principle allowed. However, this principle does not apply if such imitation can cause confusion among the public and if the imitating competitor fails to fulfil its obligation to do everything that can reasonably be done – without prejudicing the soundness or usability of its product – to prevent a risk of confusion as a result of the similarity of the two products.
In this context, the claimant must show that products with an alternative shape have the same advantages as his products. This is not the case if the alternative shapes for the product are not equivalent to the “original product” in terms of soundness and usability.
If there are no reasonable options for avoiding confusion in another way without compromising the soundness and usability of the product, it is sufficient that the product distances itself from the simulated product with regard to its external characteristics (e.g. colour and mention of name).
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See, with effect from 1 March 2019, Art. 2.2bis para. 1, under e., ii., BCIP.
Directive 2008/95/EC,  OJ L299/25; now Directive (EU) 2015/2436 on the approximation of the trade mark law of the Member States (recast),  OJ L336/1 (see Art. 4 para. 1, introduction and under e), ii)).
Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark,  OJ L11/1; now Regulation (EU) 2017/1001 on the EU trade mark,  OJ L154/1.
See CJEU, 18 June 2002, case C-299/99 Philips/Remington ECLI: EU: C: 2002: 377, para. 78, CJEU, 14 September 2010, case C-48/09 P Lego Juris ECLI:EU:C:2010:516, para. 43, CJEU, 18 September 2014, case C-205/13 Hauck/Stokke ECLI:EU:C:2014:2233, paras. 18–20 and CJEU, 16 September 2015, case C -215/14 Kit-Kat ECLI:EU:C:2015:604, paras. 44–45.
CJEU, 12 February 2004, Case C-218/01 Henkel ECLI:EU:C:2004:88, paras. 33 and 37.
CJEU, 18 June 2002, Case C-299/99 Philips/Remington ECLI:EU:C:2002:377, paras. 79–84.
CJEU, 14 September 2010, Case C-48/09 P Lego Juris ECLI:EU:C:2010:516, paras. 52, 69, 70, 72 and 85.
CJEU, 8 March 2018, Case C-395/16 Doceram ECLI:EU:C:2018:172, para. 37.
See among others HR 19 May 2017 All Round/Simstars ECLI:NL:HR:2017:938, para. 3.4.1.
HR 20 November 2009, ECLI:NL:HR:2009:BJ6999, para. 3.5.3.
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Translated by Thom Snijders and Stijn van Deursen.
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“Capri Sun v. Riha”. IIC (2020) doi:10.1007/s40319-019-00906-w
- Shape trade mark
- Technology exception
- Sign that exists exclusively of the shape of goods
- Essential functional characteristics of a shape can only be attributed to the technical result
- Slavish imitation