Communication No 2/98 of the President of the Office of 8 April 1998 concerning the examination of three-dimensional marks

The purpose of this Communication is to explain the practice of the Office in examining applications for registration of three-dimensional marks.

  1. In accordance with Rule 3 (4) of the Implementing Regulation, applicants applying for registration of three-dimensional marks must make a corresponding indication in the application. The application form prepared by the Office provides a box that is to be checked in these cases. In addition a representation of the mark must be supplied. The representation in photographic or graphic form may contain up to six different perspectives of the mark.

    When the application does not contain a corresponding indication and when it is not clear from the circumstances that registration of a threedimensional mark is requested, the Office will treat the application as a request for a two-dimensional 'figurative mark'.

    When the box 'figurative mark' has been checked in the application form or when the application contains a corresponding indication, the Office will treat the application as requesting registration of the mark as a twodimensional mark.

  2. Three-dimensional marks may, in addition to the three-dimensional shape itself, also contain verbal or figurative elements applied to that shape.

  3. An application requesting registration of a three-dimensional mark may also claim colour at the same time, by making a corresponding indication to that effect, as is provided for in Rule 3 (5) of the Implementing Regulation. In these cases, the colours making up the mark must be indicated. The representation must also be in colour.

  4. Pursuant to Rule 3 (3) of the Implementing Regulation, the applicant, when requesting registration of a three-dimensional mark, may also provide a description of the mark. Such a description is not mandatory but may be useful because it may permit the Office to determine the nature of the mark. The Office will object to a description only if it obviously is at variance with the representation of the mark.

  5. In examining three-dimensional marks for absolute grounds of refusal, primarily the provisions of Article 7 (1) (b), (c), (d), and (e) of the Community Trade Mark Regulation are involved. Under these provisions, a mark may only be refused if it consists exclusively of one of the elements referred to in these provisions and the ground of refusal exists in relation to the goods or services for which registration is requested.

Accordingly, the Office will reject, on one or several of the grounds referred to above, three-dimensional marks consisting exclusively of standard or ordinary containers (bottles, boxes, etc.) or the standard or usual shape of the goods for which registration is sought. Where the three-dimensional mark contains other elements (verbal or figurative elements or colour) and when these other elements alone or in combination with the three-dimensional shape are sufficient to render the mark registrable, the Office will not refuse registration.

As in cases of word marks and figurative marks consisting of several elements, some or all of which by themselves would not be registrable, the Office, when accepting such combination three-dimensional marks, will not point out to the applicant, or to the public when publishing the mark, the basis for accepting the application.

Consequently, when such combination three-dimensional marks are published or registered, this cannot be taken as an indication that the Office would have accepted the three-dimensional shape itself as registrable.

Jean-Claude Combaldieu