The ECJ in Benetton (case C-371/06 of September 19, 2007) has ruled on whether or not a sign, which initially consisted exclusively of a shape giving substantial value to the product and then had acquired recognitio
n following advertising campaigns, can become a protectable trademark. Not surprisingly, also given the Philips’ precendent (cf. case C-229/99) the ECJ held that the shape of a product which gives substantial value to that product cannot constitute a trade mark under Article 3(3) of that directive even if, prior to the application for registration, it acquired attractiveness as a result of its recognition as a distinctive sign following promotional campaigns. The decision clarifies that acquired distinctiveness is a legal not a marketing concept. In other words, it can only function if the sign is originally capable to be a protectable sign. If it is not, even if it may have acquired recognition among consumers, its genetic defect will render it impossible to achieve acquired distinctiveness and thus to be actionable against third parties’ use of similar signs. The same conclusion could have perhaps been reached also using the second prong of Fitnessworld (case C-292/00) but the ECJ possibly tried to avoid entering the mined filed of what constitutes a sign and what constitutes an ornamentation.
n following advertising campaigns, can become a protectable trademark. Not surprisingly, also given the Philips’ precendent (cf. case C-229/99) the ECJ held that the shape of a product which gives substantial value to that product cannot constitute a trade mark under Article 3(3) of that directive even if, prior to the application for registration, it acquired attractiveness as a result of its recognition as a distinctive sign following promotional campaigns. The decision clarifies that acquired distinctiveness is a legal not a marketing concept. In other words, it can only function if the sign is originally capable to be a protectable sign. If it is not, even if it may have acquired recognition among consumers, its genetic defect will render it impossible to achieve acquired distinctiveness and thus to be actionable against third parties’ use of similar signs. The same conclusion could have perhaps been reached also using the second prong of Fitnessworld (case C-292/00) but the ECJ possibly tried to avoid entering the mined filed of what constitutes a sign and what constitutes an ornamentation.
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