The Court of First Instance recently handed down its decision in Enercon GmbH v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (Court of First Instance (Fifth Chamber), 15 November 2007, T-61/06), in respect of whether the three-dimensional shape of a wind turbine could be registered as a trade mark.

The background to the case was as follows. On 11 December 2001, Enercon applied for a Community trade mark on a threedimensional mark representing the casing of a wind turbine generator shaped like an American football. The application was filed for Class 7 of the Nice Agreement. The Office for Harmonisation in the Internal Market (OHIM) examiner concluded that the sign lacked distinctiveness and denied the application on the basis of Article 7(1)(b) of Regulation 40/94. Enercon initiated an appeals procedure, which proved unsuccessful. According to the Board of Appeals, the relevant public does not perceive a three-dimensional mark that merely consists of the shape of the product per se in the same way as it perceives a word or figurative mark whose appearance is independent of the product it seeks to distinguish. In the case of a wind turbine, the relevant public consists of highly specialised professionals who do not identify and acquire turbines based on their appearance. Given the high investment required, they rely on trade names and trade marks that provide them with accurate and verifiable information on the product’s origin. As far as Enercon relied on distinctiveness acquired through use, the Board of Appeals concluded that this was not sufficiently proven, as Enercon only proved use in Germany and Austria, thereby ignoring important markets like Denmark and Spain. Moreover, the Board of Appeals held that Enercon only proved use after the trade mark application of 11 December 2001.

In its action at the Court of First Instance (CFI), Enercon stated that the Board of Appeals did not act in accordance with Article 7(1)(b) of Regulation 40/94, which excludes from trade mark protection marks that lack a distinctive character. According to Enercon, the unique shape of its transmission allowed them to build the football-shaped generators, whereas their competitors’ generators were necessarily more square-shaped as a result of their transmission’s design. In a way, the special shape of their product was meant to demonstrate the company’s innovativeness and thereby distinguish the product from the existing ones. Citing a variety of its prior judgements, the Court ruled that distinctiveness can be harder to prove for shapes lacking figurative or word elements. Furthermore, when proving distinctiveness, it is insufficient to demonstrate that a shape is a variant of the usual product shape. For distinctiveness in the sense of Article 7(1)(b), it is required that the average user of the product is able to distinguish it without inquiry or particular cautiousness. In this case, a skilled professional would be able to tell from the shape of the generator that the designer used a technique that is innovative and different from the one usually used for wind turbines. However, considering the lack of special characteristics, such a person would not be able to construe the origin of the product from its shape.

As far as distinctiveness through use was concerned, the CFI denied Enercon’s claim that the principles of the protection of legitimate expectations and fair cooperation obliged the Board of Appeals to order the submission of evidence of use in Denmark and Spain prior to the application date, instead of rejecting the application.