TY - JOUR
AB - Benelux Convention on Intellectual Property, Art. 2.1 para. 2; Trade Mark Directive, Art. 3(1)(e)(ii) – Capri Sun v Riha Headnotes by the Editorial Office 1. The availability of alternatives that can achieve the same outcome does not set aside the technical exception to registering a three-dimensional trade mark. The relevant test is whether all essential characteristics serve a technical function. 2. The fact that design law allows such a consideration is not relevant to the analysis in a trade mark case because in both areas of the law rights differ both in function and in the duration of protection that is granted. Moreover, the technical exception in design law is different in nature from that in trade mark law. In design law, it is not a ground for invalidity, but rather a limitation of the scope of protection. Supreme Court (Hoge Raad), decision of 28 June 2019 – 18/01154 1. Course of the proceedings For the course of the proceedings in the factual instances, the Supreme Court refers to: the judgments in case C / 13/549212 / HA ZA 13-1145 of the Amsterdam District Court of 22 January 2014 and 24 December 2014; the judgment in case 200.174.903 / 01 of the Amsterdam Court of Appeal of 19 December 2017. Capri Sun appealed in cassation against the judgment of the Court of Appeal. Riha submitted a statement of defence for dismissal of the appeal in cassation. The case was clarified by the lawyers of the parties, for Capri Sun also by Mr. A.J. Rijsterborgh. In his opinion, Advocate General G.R.B. van Peursem advises to dismiss the appeal in cassation. Capri Sun's lawyer responded in writing to that conclusion. 2. Starting points and facts 2.1 To the extent that this is relevant to the cassation proceedings, the following can be assumed. (i) Capri Sun is the proprietor of the following international shape trade mark with validity in Belgium, the Netherlands and Luxembourg (Benelux): This shape trade mark is registered under number IR 677879 on 26 June 1997, for non-alcoholic drinks, fruit drinks, fruit juices and fruit nectars in class 32 (herein-after: the shape trade mark). (ii) Capri Sun markets (children's) fruit juice drinks in Benelux in so-called ‘stand-up pouches’ in the shape as shown in the trade mark registration, and specifically in the Dutch language area under the Capri-Sun brand: (iii) Riha is a producer of fruit juices and fruit drinks. It sells fruit drinks under its own brands and under ‘private labels’ of various supermarkets. (iv) On 28 and 29 May 2013, the ‘World of Private Label’ trade fair was staged in Amsterdam. At this trade fair, Riha offered drinks to retailers to market them under their own brand in (amongst other things) the stand-up pouch pictured below. 2.2.1 In these proceedings, Capri Sun demanded, in the first place, that Riha cease and desist any infringement of Capri Sun’s shape trade mark in Benelux, and in particular any use as referred to in Art. 2.20(2) (old) Benelux Convention on Intellectual Property (BCIP) of the shape of a package such as Capri Sun’s stand-up pouch. In the alternative, Capri Sun demanded that Riha be ordered to cease trading in the Netherlands and to stop offering and trading stand-up pouches intended for the packaging of fruit juices or other non-alcoholic drinks that are similar to the shape of Capri Sun’s stand-up pouch. This alternative claim was grounded in the argument that Riha is acting unlawfully by marketing a slavish imitation of the stand-up pouch of Capri Sun. In counterclaim proceedings, Riha demanded, inter alia, the annulment of the shape trade mark for Benelux. 2.2.2 The Court of First Instance rejected the claims of Capri Sun in the main action. In counterclaim proceedings, it declared the Benelux trade mark invalid. 2.2.3 The Court of Appeal confirmed the Court of First Instance’s judgment. To that end – in so far as it is relevant to the cassation proceedings – it considered the following: 3.3.1 The pouches used in the present proceedings are made of flexible (reflective/aluminium-coloured) composite film with welded side seams, which are rectangular in shape when unfilled. They are provided with an oval-shaped insert at the bottom. In a filled state, the pouches – if laid flat – are also (more or less) rectangular in shape and the drink is more or less evenly distributed along the length of the pouch. The (slightly) tapered shape as shown in the trade mark registration (on appeal Capri Sun describes the front view of the shape as an isosceles trapezoid with obtuse angles on the underside, outgoing straight sides and, seen horizontally, a straight top), is the result of the curve on the underside of the pouches that occurs when the filled pouch is placed upright. 3.3.2 The packaging method of drinks as described here offers several advantages of a practical/functional nature – as Riha has explained sufficiently convincingly […]. Because of the more or less rectangular shape and even distribution of the drink in the horizontal state, the drink pouch can be placed in a sandwich box without unnecessary loss of space. It can also be put upright when using the fruit drink with a straw, which prevents spillage as much as possible while eating a meal. The dimensions of the pouch are such that it contains a quantity of drink that is appropriate for the target group (usually children). The pouch, which is made of flexible material, is relatively stable when standing because the two film sides are joined at the top and the bulge is at the bottom. The quality composite film used, and the wide welds, provide strength and protect against leakage when transporting the pouch. 3.3.3 In light of these points, the Court of Appeal agreed with the Court of First Instance that the shape registered by Capri Sun as a trade mark has been determined so functionally/technically that, based on the provisions of Art. 2.1 para. 2 of the BCIP, trade mark protection cannot be granted to it. It is, after all, a shape of which the essential characteristics are inherent to the generic function of the packaging in question. Granting trade mark protection to it would undesirably prevent competing undertakings from giving their beverage packaging an equally useful shape for its use (also in view of the target group and the usual method of use). That factual considerations – other than those of a practical/technical nature – also played a role in the design of the pouch (along with, according to Capri Sun, creative and aesthetic choices), is insufficiently supported by the facts. The starting point is a basic, more or less rectangular shape, which in terms of height-width ratio is an obvious way of fulfilling the packaging’s function (holding drinks to be consumed, in particular, by children). The ‘trapezoidal shape’ of the stand-up pouch arises purely as a result of its function as a container of drinks, which, among other things, is used upright during consumption thereof and is necessary to fulfil the function described above under 3.3.2. 3.3.4 The Court of Appeal does not address Capri Sun's argument that it would be possible to make stand-up pouches with a (slightly) different shape that would have an equally useful function, as it has not been found that the above-described user benefits are inherent to the same extent to such a differently shaped pouch. It must be assumed that the benefits, for which a consumer/user will also search in the goods of competitors, are connected to the (more or less) rectangular shape of the pouches in laying position, in combination with the possibility of placing them upright stably (thus creating the shape that is at issue in the present case). The technology exception serves to prevent the creation of a monopoly on such functional characteristics (ECJ 18 June 2002, C-299/99 Philips/Remington, para. 78). In addition, the fact that there are other shapes that could be used to obtain the same technical result, does not set aside the ground for invalidity of the registration discussed here (cf. the aforementioned judgment in para. 84). […] 3.4 On the basis of the foregoing, the Court of Appeal also concludes that the shape trade mark registered by Capri Sun is invalid, and that the claims of Capri Sun that are based on infringement thereof cannot be awarded. 3.5 Partly in light of the foregoing, Riha's marketing of a stand-up pouch with a shape similar to that of Capri Sun's stand-up pouch, cannot be qualified as an unlawful slavish imitation. After all, it concerns characteristics that are necessary to obtain a technical result. It must be assumed that if the (largely similar) design of the pouch raises confusion among the public, this cannot be avoided without compromising the soundness and usability of the packaging. In this regard, the fact that Riha’s stand-up pouch is made of similar reflective aluminium-coloured composite film is also without significance. It also follows from Capri Sun's argument that the use of such a film ensures that the pouch is impermeable to liquid, gas and light, which promotes the shelf life of the packaged drinks, and that the use of aluminium-coloured film is suitable for the packaging of fruit drink. Riha has also explained with motivation that it is standard material and that its use is also obvious from a cost point of view. With regard to the other aspects of the exterior appearance of the stand-up pouches (in particular the imprint), the Court of Appeal is of the opinion that with the copies displayed to the Court of Appeal, Riha keeps a sufficient distance from Capri Sun’s stand-up pouch to prevent any unnecessary confusion. In this context, the Court of Appeal points to the prominently displayed different brand name, the further style/font of the inscriptions and differences in (background) colours. In light of this, the Court of Appeal agrees with the Court of First Instance that the evidence does not support the conclusion that Riha has committed an unlawful act vis-à-vis Capri Sun.’ 3. Assessment of grounds for cassation Shape trade mark; technology exception 3.1 Sections I and II of the grounds for cassation are directed against the judgment of the Court of Appeal in paras. 3.3.1-3.3.4 and 3.4, that the shape trade mark of Capri Sun is invalid because all essential characteristics of the stand-up pouch are functionally/technically determined. The following is relevant when assessing these sections. 3.2.1 Article 2.1 para. 2 (old) BCIP,1 which is applicable in this case, stipulates – insofar as it is important in cassation – that signs that consist exclusively of a shape that is necessary to obtain a technical result, cannot be regarded as trade marks (hereinafter: the technology exception). This provision must be interpreted in accordance with Art. 3(1)(e)(ii) of the Trade mark Directive as it read until 13 January 2016 (hereinafter: the Directive).2 An identical provision has been included in Art. 7(1)(e)(ii) of the EU Trade Mark Regulation as it read until 23 March 2016 (hereinafter: the Regulation (old)).3 3.2.2 The rationale behind absolute grounds for refusal and invalidity of shape trade marks is to prevent the trade mark holder, as a result of the protection of the trade mark right, from being granted a monopoly on technical solutions or usage characteristics of goods, which a consumer might look for in the goods of competitors. The provision intends to prevent the exclusive and lasting right resulting from a trade mark being used to immortalise – without any limitation in time – other rights that the EU legislature intends to be subject to time-barring.4 3.2.3 With regard to goods that do not have an intrinsic shape and can only be marketed in packaged shape – such as liquids – the CJEU has ruled that the packaging gives shape to the goods. In those cases, this packaging – for the examination of an application for registration as a trade mark – must be equated with the shape of the product, so that this packaging is the shape of the product within the meaning of Art. 3(1)(e) of the Directive.5 3.2.4 With regard to the ground for refusal and invalidity of Art. 3(1)(e)(ii) of the Directive (the technology exception), the CJEU ruled that a sign that exists exclusively of the shape of goods cannot be registered under this provision if it is demonstrated that the essential functional characteristics of that shape can only be attributed to the technical result. Moreover, the evidence that there are other shapes that can achieve the same technical result cannot set aside the ground for refusal or invalidity of the registration mentioned in this provision. This is based on the general interest that a shape of which the essential characteristics correspond to a technical function and which was chosen to perform that function, must be capable of being used undisturbed by anyone. This precludes such signs from being registered as a trade mark of one undertaking.6 In the context of Art. 7(1)(e)(ii) of the Regulation (old), the CJEU has held that the technology exception only applies if all the essential characteristics of the sign are functional. The provision does not apply if the shape of the product in question contains an important non-functional element, such as an ornamental or fancy element that plays an important role in that shape. The identification of the essential characteristics – namely the most important elements of the sign – must be carried out on a case-by-case basis, for which the competent authority can either rely on a consecutive examination of each component of the sign, or directly on the overall impression conveyed by the sign. Once the essential characteristics of the sign have been established, it must be ascertained whether all those characteristics correspond to the technical function of the product concerned.7 3.3.1 Section I [of the grounds for cassation] is directed against the judgment of the Court of Appeal that all essential characteristics of the shape trade mark have been determined functionally/technically. The section argues, amongst other things, that the Court of Appeal designated the straight sides as an essential characteristic of the stand-up pouch, but did not subsequently assign a technical function to it. Thus, according to the section, the Court of Appeal failed to recognise that the technology exception only applies if all essential characteristics of the shape have been determined technically. The section argues that if the Court of Appeal has considered the straight sides of the stand-up pouch to be functional because they make it compact (so that the pouch can for example be placed without loss of space in a lunch box), it has not sufficiently substantiated that judgment. 3.3.2 The Court of Appeal has in para. 3.3.1, apparently (also considering para. 3.3.3 of its judgment), with reference to the trade mark registration, identified as essential characteristics the more or less rectangular shape of the stand-up pouch when laid flat in a filled state, and the slightly tapered shape that is created when the filled pouch is put upright. In addition, the Court of Appeal referred to the straight sides of the stand-up pouch as part of the description of the somewhat tapered shape which Capri Sun provided during appeal. From that description it cannot be inferred that the Court of Appeal regarded the straight sides of the pouch (within the substantially considered more or less rectangular or slightly tapered shape) as an essential characteristic which has to be considered separately. This section [of the grounds for cassation] is therefore based on an incorrect reading of the judgment and so cannot lead to cassation. 3.4.1 Section II [of the grounds for cassation] is directed against para. 3.3.4, in which the Court of Appeal rejects Capri Sun's appeal that it is possible to make stand-up pouches of a different shape. In section II.1, it is argued that it is incomprehensible that the Court of Appeal found that it has not been shown that stand-up pouches with an alternative shape are inherently similar with regard to the benefits of use described earlier (in para. 3.3.2 of the judgment). With reference to passages in Capri Sun's statement of appeal, the section argues that it is not possible to see without further justification why stand-up pouches with a slightly different shape cannot be assigned the same useful function as the stand-up pouch from Capri Sun. This complaint [II.1] cannot lead to cassation, because the rejection by the Court of Appeal of the appeal to alternative design is independently supported by its judgment that the existence of alternatives that can achieve the same technical result does not set aside the technology exception, about which the complaint [II.2] fails (see below in 3.4.2-3.4.6). 3.4.2 Section II.2 [of the grounds for cassation] complains, among other things, that the technology exception does not apply to a shape for which infinitely many alternatives are available, as is the case with packaging for shapeless goods (in this case a stand-up pouch for a drink). In that case, according to the section, there is no danger of an everlasting monopolisation of a technical solution. The rationale of the technology exception is therefore not at stake. Capri Sun thus argues, in its own words, for a refinement of the rule given by the CJEU in the case of Lego Juris, at least for shapeless goods. Reference is made to recent case law of the CJEU on the technology exception of design law. 3.4.3 With regard to the shape trade mark, the CJEU has interpreted the technology exception – having regard to the general interest that underlies it – in such a way that: (i) once it has been demonstrated that the essential functional characteristics of the shape of the product can only be attributed to a technical result, that shape cannot be protected by trade mark law; and (ii) that the existence of an alternative design with which the same technical result can be achieved, does not set aside this ground for refusal or invalidity of the trade mark registration (on that topic, see also para. 3.2.4). This concerns an acte éclairé, so that there is no reason to refer this for a preliminary ruling, such as is suggested by Capri Sun. 3.4.4 The fact that the CJEU has considered in its recent decision in the case of Doceram in the context of design law, that attention can be paid to whether there are alternative models with the same technical function,8 provides no grounds for doubt. Trade mark and design rights differ both in function and in the duration of protection that is granted. Moreover, the technology exception in design law is different in nature from that in trade mark law. In design law it is not a ground for invalidity, but rather a limitation of the scope of protection. In principle it is therefore not possible to draw conclusions on the basis of the CJEU's ruling on the technology exception in design law with regard to the scope of that exception in trade mark law. More importantly, however, the Doceram case refers to the question of how to determine whether an external characteristic of a product is determined solely by the technical function of that product. It therefore does not follow – as is also clear from paras. 30 to 32 of the judgment of the CJEU – that in case it is established that an external characteristic is determined solely by the technical function of the product (such as is done by the Court of Appeal in this with regard to all essential characteristics of Capri Sun’s stand-up pouch), the technology exception would still not be applicable if there are sufficient alternatives for achieving the same technical outcome. 3.4.5 The CJEU also ruled that Art. 3(1)(e) of the Directive also applies to shapeless goods (see above in 3.2.3). 3.4.6 The complaint discussed previously in para. 3.4.2 conflicts with the foregoing. Slavish imitation 3.5.1 Section III [of the grounds for cassation] is directed against the judgment of the Court of Appeal in para. 3.5 that Riha’s release of a stand-up pouch with a shape similar to that of Capri Sun's stand-up pouch cannot be regarded as an unlawful slavish imitation. 3.5.2 With regard to imitation of material goods that are no longer protected by an absolute intellectual property right, imitation of such goods is in principle allowed. However, this principle does not apply if such imitation can cause confusion among the public and if the imitating competitor fails to fulfil its obligation to do everything that can reasonably be done – without prejudicing the soundness or usability of its product – to prevent a risk of confusion as a result of the similarity of the two products.9 3.5.3 In Section III.1 [of the grounds for cassation], Capri Sun complains that the Court of Appeal ignored the fact that there are alternative shapes that lead to the same technical outcome. This circumstance means (according to the complainant) that it was not necessary to imitate Capri Sun's stand-up pouch for the sake of soundness and usability. 3.5.4 The complaint is unfounded. After all, the Court of Appeal refers to its judgment on the technology exception. In this context, the Court of Appeal has considered, among other things, that it has not been shown that stand-up pouches with an alternative shape have the same advantages as Capri Sun's stand-up pouches. This finding entails the judgment that alternative shapes for a stand-up pouch as mentioned by Capri Sun are not equivalent to Capri Sun's stand-up pouch in terms of soundness and usability. Insofar as the section – with reference to section II [of the grounds for cassation] – complains about the reasoning in support of that judgment, this complaint cannot succeed, because the Court of Appeal did not have to read an argument along the line of reasoning mentioned in para. 3.5.3 in the paragraphs mentioned by the section (see also the opinion of the Advocate General under 2.45 and 2.46). 3.5.5 Section III.2 [of the grounds for cassation] complains, among other things, that the Court of Appeal wrongly concluded on the basis of the imprint of Riha’s stand-up pouches, that Riha has sufficiently distanced itself from Capri Sun’s stand-up pouch to prevent unnecessary confusion. According to this section, the Court of Appeal therewith disregards the fact that the doctrine of slavish imitation concerns the imitation of the shape of goods and that the imprint on a similar shape is not important in that regard, or at least does not have the prominent role that the Court has attributed to it. 3.5.6 This complaint also fails. If – as has to be taken as a starting point in this case – there are no reasonable options for avoiding confusion in another way without compromising the soundness and usability of the product, it is sufficient that the product distances itself from the simulated product with regard to its external characteristics (e.g. colour and mention of name). This is shown by the Supreme Court's judgment of 20 November 2009 regarding Lego v Mega Brands.10 3.6 The other complaints mentioned in the grounds for cassation also cannot lead to cassation. In light of Art. 81(1) RO [Judiciary Organisation Act], this requires no further explanation, given that those complaints do not give rise to legal questions the answering of which would be in the interest of legal unity or legal development. 3.7 Capri Sun is ordered to pay the costs of the appeal in cassation. The parties have agreed that Capri Sun would pay Riha € 33,000.00 including disbursements, in case the entire appeal for cassation is rejected. This agreement concerns both the claim based on trade mark law and the alleged unlawful act. This amount does not appear unreasonable or disproportionate. Hence, in light of Point 4 of the 2017 Regulations on litigation costs in IP cases of the Supreme Court [‘IE indicatietarieven’], and for the claim based on the alleged unlawful act, and in light of Art. 242 Dutch Code of Civil Procedure, the Supreme Court orders the payment of the agreed amount. 4. Decision The Supreme Court: – dismisses the appeal in cassation; […] Translated from the Dutch by Thom Snijders and Stijn van Deursen, Utrecht University, Netherlands. Footnotes 1 See, with effect from 1 March 2019, art 2.2bis para 1, under e., ii., BCIP. 2 Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 on the approximation of the trade mark law of the Member States, [2008] OJ L299/25; now Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 on the approximation of the trade mark law of the Member States (recast), [2015] OJ L336/1 (see art 4 para 1, introduction and under e), ii)). 3 Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, [1994] OJ L11/1; now Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the EU trade mark, [2017] OJ L154/1. 4 See CJEU, 18 June 2002, Case C-299/99 Philips/Remington EU:C:2002:377 = GRUR Int 2002, 842, para 78, CJEU, 14 September 2010, Case C-48/09 P Lego Juris EU:C:2010:516 = GRUR Int 2010, 985, para 43, CJEU, 18 September 2014, Case C-205/13 Hauck/Stokke EU:C:2014:2233 = GRUR Int 2014, 1043, para 18-20 and CJEU, 16 September 2015, Case C-215/14 Kit-Kat EU:C:2015:604 = GRUR Int 2015, 1028, paras 44-45. 5 CJEU, 12 February 2004, Case C-218/01 Henkel EU:C:2004:88 = GRUR Int 2004, 413, paras 33 and 37. 6 CJEU, 18 June 2002, Case C-299/99 Philips/Remington EU:C:2002:377, paras 79-84. 7 CJEU, 14 September 2010, Case C-48/09 P Lego Juris EU:C:2010:516, paras 52, 69, 70, 72 and 85. 8 CJEU, 8 March 2018, Case C-395/16 Doceram EU:C:2018:172 = GRUR Int 2018, 847, para 37. 9 See among others HR, 19 May 2017, All Round/Simstars NL:HR:2017:938, para 3.4.1. 10 HR, 20 November 2009, NL:HR:2009:BJ6999, para 3.5.3. © Published by OUP and CH Beck on behalf of GRUR e.V. 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TI - Technical Exception for Three-Dimensional Trade Marks
JO - GRUR International: Journal of European and International IP Law
DO - 10.1093/grurint/ikaa023
DA - 2020-04-01
UR - https://www.deepdyve.com/lp/oxford-university-press/technical-exception-for-three-dimensional-trade-marks-FpXpw9byOA
SP - 405
EP - 409
VL - 69
IS - 4
DP - DeepDyve
ER -