Can Trademarks Constituted by the Shape of a Product be Protected in the Jewelry Sector?

Cartier Wins Over the Request of Interim Relief by an Italian Company

Recently, an order of the court of Venice raised the matter of the shape of the product intended as a ground for refusal to registration and invalidity of a trademark.

The case is also interesting because it relates to the luxury sector and involved a leading firm in the jewelry sector, Cartier. An Italian jewelry producer, Fope S.r.l., sued Cartier alleging trademark counterfeiting and unfair competition for having marketed a jewelry collection reproducing a particular element of its icon product.  This iconic shape was previously registered as an Italian and European trademark. Cartier claimed the registered trademarks were invalid on the basis that they are composed by the shape giving a substantial value to the product and such circumstance represents a ground for refusal to registration by law.

The court, admitting the argumentation of Cartier, rejected the claim of the plaintiff.

The court recalled that, according to national and European case law (rif. CJEU C 205-13), the relevant shape constituting a ground for refusal to registration, is the one conferring to the product (a) attractiveness, (b) market value, (c) competition advantage, and that it is suitable to influence consumers’ perception so that “reserving that shape to a sole entrepreneur would prejudice the competition of the targeted market”.

Moreover, consumers’ perception distinguished the essential characteristics, although considered “a useful criteria”, cannot be crucial for the application of such ground of refusal: relevant parameters to be taken into consideration are instead “the nature of the products at issue” and “the development of a promotional strategy underlining the principal esthetic characteristics of a specific product”.

The judges of Venice ruled out counterfeiting and unfair competition also considering that jewelry is a very crowded sector and a minimum difference between products is sufficient to exclude likelihood of confusion.

By: Alessandra Feller and Alessia Castelli

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