Wind Turbine Nacelle Shape Not Registrable as European Trademark

Thanks to the IP Kat, here and here, for poitning out Rechtssache T‑71/06 (Enercon GmbH v Harmonisierungsamt für den Binnenmarkt) where

Enercon applied to register as a Community trade mark a shape (left)consisting of an American football-shaped wind turbine. The pplication was for registration in respect of "Windenergiekonverter und deren Teile, insbesondere Gondelverkleidungen" in Class 7 (per Babel Fish, "Wind energy converter and their parts, in particular car linings"). The application was rejected, as were Enercon's appeals to the Board of Appeal and now the CFI. Today, thanks to scholarly friend Tibor Gold, he can tell you the real story.

Says Tibor, summarising the decision:

"1. It is well established by case law (eg Mag Instruments) that shape/3D marks are in principle no different from other marks, but the average consumer is not used seeing shapes as indicators of origin, ie as TMs.

2. It is also well established by case law that the more a shape TM resembles the actual shape of the goods the more difficult it is to establish its distinctive character under Art 7(1)(b) CTMR (Mag).3. It is accepted by all both below and at the CFI that the average consumer in this case is a highly attentive professional person. Such a person would perceive the sign as a possible shape of the goods even if it is not the conventional shape. (The nacelle was apparently designed by Sir Norman Foster but that per se was not considered persuasive, nor the other testimonies of distinctiveness). The mere departure from a standard shape does not lead to the conclusion that the average consumer who is reasonably observant etc would perceive the sign/shape as being capable, without having to undertake detailed analysis, of distinguishing this product from products of other undertakings.

4. It is irrelevant that the shape has been registered eg in Germany as a design.

5. Arguments based on alleged violation of various aspects of Art. 73 CTMR and principles of legitimate expectation and loyal cooperation were also rejected".