The newly extended absolute grounds for refusal of European Union Trademarks provided in Art. 7 (1) (e) EUTMR do not apply to EUTMs, which have been registered before their entry into effect (CJEU, judgment of March 14, 2019, C-21/18).

Originally, Art. 7 (1) (e) of Regulation 207/2009 (Community Trademark Regulation) prohibited the registration of

signs which consist exclusively of:

(i)      the shape which results from the nature of the goods themselves;

(ii)     the shape of goods which is necessary to obtain a technical result;

(iii)    the shape which gives substantial value to the goods;

This limitation to three-dimensional trademarks (“… shape of goods…”) has been eliminated by Regulation 2015/2424 of December 6, 2015, and Art. 7 (1) (e) EUTMR now reads:

signs which consist exclusively of:

(i)      the shape, or another characteristic, which results from the nature of the goods themselves;

(ii)     the shape, or another characteristic, of goods which is necessary to obtain a technical result;

(iii)    the shape, or another characteristic, which gives substantial value to the goods;

In 2017, The Swedish Court of Appeal had to decide if the new and broader version of Art. 7 (1) (e) EUTMR also applies to EUTMs, which have been registered before the date this new version entered into effect. In the case at hand, the defendant countered an infringement action based on a EUTM consisting of the two-dimensional representation of a two-dimensional product (e.g. fabric decorated with the sign) by filing a counterclaim for invalidation based on, inter alia, Art. 7 (1) (e) EUTMR. While such signs do not fall under the scope of the previous Art. 7 (1) (e) Community Trademark Regulation (as the CJEU also confirmed in this judgment of March 14, 2019), they arguably might be endangered by the new and broader ground for refusal of the EUTMR. The Swedish Court of Appeal therefore asked the Court of Justice of the European Union for a preliminary ruling.

In its judgment of March 14, 2019, the CJEU now explicitly stated that, in absence of any explicit legal provisions to the contrary, the old absolute ground for refusal of Art. 7 (1) (e) of the Community Trademark Regulation applies to trademarks registered before the date the new version of the EUTMR entered into effect.

Practical Impact:

This clear statement of the CJEU brings about legal certainty regarding the question, which versions of the absolute grounds for refusal apply to European Union Trademarks registered before and after the entry into effect of Regulation 2015/2424. The owners of “old” EUTMs thus do not have to be concerned in view of the subsequent broadening of the scope of these invalidity grounds.