Bang & Olufsen’s well-known loudspeaker, known as the ‘organ pipe’, could not be registered as a Community trademark because the distinctive design gave the loudspeaker substantial value.
A product’s shape can be its trademark. But if so, the purpose of the shape must not be to achieve a technical result and nor must the product consist exclusively of a shape which gives substantial value to the product. These limitations are necessary to distinguish trademark law from both patent law and design law. In a recent case, the General Court considered whether it was the shape of a B&O speaker alone which gave it substantial value.
In 2003, B&O applied to register the shape of the ‘organ pipe’ speaker as a Community trademark. The first time around, the OHIM refused the application because the ‘organ pipe’ was not sufficiently distinctive from other speakers to the average consumer. B&O appealed to the General Court, which allowed the appeal in 2007. The matter was therefore sent back to the OHIM, which refused the application once again – this time because its shape gave substantial value to the ‘organ pipe’.
Unsuccessful second appeal
For the second time, B&O appealed to the General Court, now submitting that although the shape of the ‘organ pipe’ may be inspired by aesthetic considerations, the shape did not give the speaker substantial value within the meaning of EU trademark law.
B&O argued that the Community Trademark Directive requires the product to consist exclusively of the shape which gives substantial value to the product. But the functionality of the ‘organ pipe’ gave it value as well. In addition, other products having a certain design had been registered as a Community trademarks in the past.
The General Court dismissed the appeal on the ground that the purpose of the rule on refusal of products consisting exclusively of shapes which give substantial value to the products in question is to ensure that trademark law is not used to grant trademark owners a permanent monopoly on such shapes.
The General Court also said there could be no doubt that the design of the ‘organ pipe’ was exceedingly important in the consumer’s choice. The OHIM was therefore correct in deciding that the shape of the ‘organ pipe’ gave substantial value to the product.
Accordingly, B&O’s application to register the ‘organ pipe’ as a Community trademark was refused.
Norrbom Vinding notes:
- that the General Court did not expressly address the issue of whether the ‘organ pipe’ speaker consists exclusively of a shape which gives it substantial value; rather, it seems the conclusion was that the shape of the speaker definitely gives it substantial value; and
- that it may be difficult to register three-dimensional forms if this case leads to a fairly broad interpretation of the rule on refusal of products consisting of shapes which give them substantial value.