Fabrics with decorative designs are therefore eligible for trade mark registration under CTMR 207/2009.

In this case, the CJEU was referred a number of questions by the District Court in Stockholm, Sweden, regarding the interpretation of Article 7(1)(e)(iii) EUTMR 2015/2424, that a sign “which consists exclusively of the shape, or another characteristic, which gives substantial value to the goods” shall not be registered. An amendment to the EUTMR came into force on 23 March 2016 – previously in the CTMR 207/2009, the provision did not include the words “or another characteristic”.

Background

The contested figurative EU trade mark (EUTM) (see below), owned by Svenskt Tenn, consists of a design incorporating parts of a map of Manhattan, alongside the word MANHATTAN (known as the MANHATTAN mark).

Svenskt Tenn also claimed ownership of the copyright in the MANHATTAN mark.

The MANHATTAN mark covers various goods/services, including 2D goods such as textiles, bed and table covers, and wallpaper.

Svenskt Tenn markets and sells furniture, furnishing fabrics and other decorative accessories, and brought trade mark and copyright infringement proceedings in Sweden against Textilis (and its owner, Mr Keskin), which sells fabrics and goods bearing patterns similar to those of the MANHATTAN mark.

Textilis counterclaimed for invalidity of the EUTM, including on the grounds that the MANHATTAN mark should not have been registered as it consists exclusively of a shape which gives substantial value to the goods.

The Stockholm District Court dismissed the counterclaim and found trade mark and copyright infringement.

Textilis and Mr Keskin appealed, arguing that the third indent of Article 7(1)(e) applies to “other characteristics” of a sign and that a figurative sign on goods such as fabric cannot be registered as a trade mark without subverting the principle of the limitation in time of copyright protection.

Textilis argued that it is clear the shape prohibition applies to 3D and 2D marks representing 3D shapes and that the prohibition should also apply to 2D marks representing 2D goods such as fabrics.

Referral to the CJEU

The Swedish Court referred several questions to the CJEU, concerning the interpretation of the third indent of Article 7(1)(e).

The first question related to whether the amended wording of the EUTMR should apply in this case. The MANHATTAN mark was registered prior to 23 March 2016; and the application for invalidity was also filed prior to the entry into force of this amendment.

For reasons of legal certainty and the need to protect legitimate expectations, the CJEU held that the additional words “or another characteristic” did not apply retroactively.

In its second question, the Swedish Court requested clarification on whether a sign consisting of a 2D decorative motif, which can be applied to a 2D product such as fabric, consists “exclusively of the shape”.

The CJEU noted the recent decision in the Louboutin red sole case, that the application of a colour to a location on a product does not mean that the sign consists exclusively of a shape.

Here, the MANHATTAN mark contains decorative motifs which can be affixed to 2D goods. Whilst there are various lines and contours, the sign also features the word MANHATTAN, and the decorative elements appear both inside and outside the outline of the stylised geographical maps.

The CJEU held that the form of the goods differs to that of the decorative motifs; and the sign is not indissociable from the shape of the goods, such that the sign did not consist exclusively of the shape within the meaning of the CTMR. The CJEU also considered that any copyright in the print did not impact whether the trade mark consists exclusively of a “shape”.

It would have been interesting to see how the CJEU would have treated this assessment had it been on the basis of the amended EUTMR 2015/2424.