Shape trademarks: the Court of Florence’s innovative interpretation of “substantial value”

The Court of Florence recently expressed an interesting view on the interpretation of absolute grounds of registration invalidity provided for signs constituted by the shape of a product, and, in particular, substantial value.

The case concerned the shape of the world wide famous Hermes’ “KELLY” and “BIRKIN” bags, the shape of which was registered as 3D trademark in Italy and before the EUIPO.


Hermes alleged the infringement of its famous trademarks by an Italian company offering for sale bags highly similar to the ones protected with Hermes shape trademarks. The alleged infringer resisted claiming, as usual in these cases,  that the above trademarks were invalid since, besides other things, they consist of a shape giving substantial value to the bag.

The Court of Florence dismissed such claim, excluding the existence of a substantial value with an unusual (and deeply interesting) interpretation of this prevention.

Firstly, the decision (available heredefines substantial value as a real and concrete aesthetic plus-value – relevant per se to the product, being instead irrelevant the existence of any particular decoration or added part – that cannot be separated from the product itself and is capable of prevailing on the product’s shape features that are necessary to its function.

Then, the Court expressly excluded that the mere ornamental attitude of the product’s appearance could be of relevance in the evaluation on the existence of a substantial value. Differently from the main case law on this ground of refusal (see decision of 15 February 2012 of the Court of Venice on Crocs shoes or decision of 16 June 2015 of the Court of Milan on Flou’s Nathalie bed), the decision essentially denies that substantial value consists in the capability of the shape to influence the consumer’s choice of purchase, so to be itself the main reason why the product is in fact chosen and bought. In the Court’s view, this capability of the object’s shape to catch the consumers’ attention is connected only with trademark reputation.

Only when the aesthetic appearance of the product’s ornamental shape is so relevant to give a particular aesthetic value inseparable from the product itself trademark registration is prevented. Having this interpretation of substantial value in mind, the Court affirmed that “KELLY” and “BIRKIN” bags where valid trademarks as their shape trademark may be separated from the product itself and does not merely consist in the standard appearance of bags.

This decision interestingly tries to plot a demarcation line between substantial value and trademark reputation/distinctiveness that are often overlapped in the context of the discussions on substantial value. The distinction proposed by the Court of Florence could indeed be of help in drafting a clear and new definition of substantial value, whose interpretation is still not crystal clear when applied to real cases. As a matter of fact, and as actually noticed by the Vespa case (see here), the current interpretation of this condition often leads the trademark owner to deny the attractiveness and distinctiveness of the shape of a product when substantial value is under discussion on the basis that an actual recognition of the shape of the product on the market may lead to the assertion of the existence of a substantial value.

The interpretation of the Court of Florence would not fall into this trap and appears to be more logical in the overall context of the trademark protection, as it denies any relevance of the trademark distinctive character in the context of absolute grounds of registration invalidity provided for signs constituted by the shape of the product. This interpretation, although interesting, is however new and currently isolated. While certainly providing food for thought, it downplays the meaning, and legal sense , of the requisite of substantial value as a reason to attract consumers. If only reputation is attractive, what is the meaning, and sense, to verify the occurrence of a substantial value? ‘Substantial’ to what effect?!

Maria Luigia Franceschelli

Court of Florence, case No. 5850/2010, 31 January 2017, Hermes International Scpa, Hermes Sellier SA, Hermes Italie SpA vs. Papini Paolo & C. Snc and Corsini Giorgio di Gianna e Paola Corsini Snc.

EU General Court rules Lego mini-figures should continue to be protected as shape marks

By a decisionlegoman of June 16, 2015, T-395/14 (full text here), the General Court of the EU (GC) knocked down a challenge by Best Lock Ltd, a British brand of plastic building bricks that are compatible with and competitor of the Danish firm Lego, arguing that the community 3D trade mark (TM) reproducing the shape of Lego’s famous figurines, registered in 2000, was invalid pursuant to Article 7(1)(e)(i) and (ii) of Regulation No 207/2009 (Reg.) because the shape of the little men was determined by the nature of the goods themselves and consists exclusively of a shape necessary to obtain a technical result, namely, the possibility of joining them to other interlocking building blocks for play purposes. The GC said that the contested TM does not consist “exclusively” of a functional shape. The “exclusivity” condition, according to ECJ’s previous case law (Lego Juris v OHIM, 14 September 2010, C-48/09 P, par. 51), is fulfilled only when all the shape’s essential characteristics perform a technical function. In the present case, however, the ability to join to other building blocks can not be considered the key elements of the Lego figures. Holes on the feet and backs of the legs “do not, per se, enable it to be known whether those components have any technical function” (par. 33), but rather are necessary in order “to confer human traits on the figure in question” (par. 35). Their function is therefore aesthetic and fully distinctive.

The GC decision is just the last episode of a judicial saga between the two companies started with a patent challenge in Germany in 2004 (BGH, 2 december 2004, I ZR 30/02), where Lego bricks were denied patent protection. After that, in a further case in 2010 (Lego Juris v OHIM, cited), the Canadian competitor Mega Bloks prevented Lego from registering its building brick also as a trademark. In case of defeat also in the present judgement, the Danish toy giant would be devoided of any IP protection for its creations. The GC, however, desregarded the ECJ’s previous findings on Lego bricks and concluded that the contested trade mark had nothing in common with the mark at issue in those proceedings, except for the fact that it was produced by the same company (para. 37). The Courts gives no other reasons for differentiating the two cases. Curiously, therefore, Lego will be able to sue only competitors producing and selling replicas of the little figures and not of the building bricks. Why is not completely clear, but rather confirms how the EU Courts findings in this complex area are always strongly facts based and a more thorough norms’ exegesis would be surely welcomed.

                                                                                                                                                                                                                                                                    Jacopo Ciani

General Court of the European Union (Third Chamber), 16 June 2015, T-395/14, Best-Lock (Europe) Ltd v. OHIM