One of the still unresolved questions of trade mark law is under what circumstances a shape mark is ineligible for protection because it consists of a shape that gives substantial value to the products for which protection is sought. In 2012, we reported on a case referred to the CJEU by the Dutch Supreme Court in a conflict regarding a 3D mark registered by Revillon for chocolate products in the shape of a vine branch, but that case (C-2/12) has since been removed from the register. In its decision of 12 April 2013, the Dutch Supreme Court however again referred questions to the CJEU, this time regarding the shape of a chair. The questions address the issues of when a shape gives substantial value to the products in question and when a shape results from their nature.

The Dutch Supreme Court formulated the questions as follows:

1.a. Does the ground for refusal or invalidity set out in Article 3 (1) (e) (i) of Directive 89/104/EEC, as codified in Directive 2008/95, i.e. that the sign consists exclusively of a shape which results from the nature of the goods themselves, apply only where the shape of a product is essential to its function or does that ground also apply where the product has one or more essential, use-related features which the consumer possibly looks for in the products of competitors?

1.b. If none of the above alternatives is correct, how should the rule be interpreted?

2.a. Does the ground for refusal or invalidity set out in Article 3 (1) (e) (iii) of Directive 89/104/EEC, as codified in Directive 2008/95, i.e. that the sign consists exclusively of a shape which gives substantial value to the goods, involve consideration of the motive(s) of the relevant public for the purchase decision?

2.b. In order for a shape to give "substantial value to the goods" within the meaning of the abovementioned rule is it necessary that the shape be regarded as the main or predominant value, in comparison to other kinds of value (such as safety, comfort and durability in the case of baby chairs)? Or can a shape also give "substantial value to the goods" if, besides that main or predominant value, the goods also have other kinds of value that can also be regarded as substantial?

2.c. Is the perception of the majority of the relevant public decisive for the answer to questions 2.a and 2.b, or can the court hold that the perception of a part of the public is sufficient to justify viewing the value in question as "substantial" within the meaning of the abovementioned provision?

2.d. If the answer to question 2.c is that the perception of a part of the public is sufficient, how large a part of the public is required?

3. Should Article 3 (1) of Directive 89/104/EEC, as codified in Directive 2008/95, be interpreted to mean that the ground for refusal or invalidity set out in (e) of that article also exists if the shape mark consists of a sign to which Article 3(1)(e)(i) applies and which otherwise meets the requirement set out in Article 3(1)(e) (iii)?

It will take at least a year before we know the CJEU's answers to these questions.