By decision filed on June 10, 2013, the Court of Venice rejected an interim injunction complaint based on the alleged infringement of a 3D Community trademark, represented by a bone-shaped box for pets’ sanitary bags, with a hole for the extraction of the same bags (reproduced below).
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This decision follows the established EU case law, according to which "the trademark protection can be granted to shapes having a certain aesthetic value as long as such value does not amount to a special adornment to the protection of which was deputed the ornamental models discipline".
According to the Court, the character of the "special adornment" that prevents the protection of the shape as a trademark, occurs "when it is reasonable to expect that consumer’s demand is oriented towards certain products rather than to others of the same kind only because the former come with this adornment, as well as when the shape is able to favour the product over competitors, being equal other characteristics of the products (such as quality, performance, price, etc…)".
In the case under exam, the Court held that such bone-shaped 3D trademark does not have any distinctive function, being not able to indicate the origin of the product. This also considering that: i) on the shape in question are reproduced the denominative and figurative trademarks of the applicant, and ii) the bone shape naturally evokes dogs and related accessories.
On the contrary, according to the Court, the shape in question is likely to induce consumers to choose that product only due to its "original and unusual” shape.
Finally, the Court excluded that the claimed shape could have acquired distinctiveness due to its advertising or to the use made, since the regularization provided for by Article 7(3) of the EC Regulation no. 207/2009 on Community trademark (the so-called "secondary meaning doctrine"), does not apply to signs excluded from registration due to their substantial value as set forth in the EC Regulation no. 207/2009, Article 7(1)(c).