The Tricky Path of 3D Trademarks – The Finnish Supreme Court Rules on Trademark Protection of the Shape of Goods

Author: Ilona Tulokas

Finnish Supreme Court decisions in the field of IP law are a rare treat. Last week, however, the Finnish Supreme Court gave an interesting decision (KKO:2017:42) on the distinctiveness of 3D trademarks.  The case concerned Abloy Oy’s ("Abloy") registered 3D trademarks protecting the shape of key blanks, i.e. the part of the key held onto when opening locks.

In the chain of events leading up to the Supreme Court decision, Abloy had initially sued Hardware Group Finland (“HGF”), stating that a certain line of HGF’s keys were infringing Abloy’s 3D trademarks. In line with the decision of the Market Court, the Supreme Court held that the distinctiveness of the trademarks that were based directly on the shape of the good itself was weak and that the protection granted to the marks should therefore be interpreted narrowly. Thus, according to the Supreme Court, there was no likelihood of confusion between Abloy’s registered trademarks and HGF’s keys. Hence, HGF had not infringed Abloy’s trademark rights.

The topic of 3D trademarks protecting the shape of goods has been addressed multiple times by the Court of Justice of the EU ("CJEU"), and it has been a hard-fought battle for the owners of the trademarks in these cases as well. For example, in Lego Juris v. OHIM and Mega Brands (C-48/09), the CJEU confirmed that a shape cannot be registered as a trademark if its essential characteristics merely perform the technical function of the product concerned and held that the 3D trademark of a Lego brick was invalid. In the Hauck v. Stokke case (C-205/13), CJEU clarified that a trademark may be refused registration if the mark consists exclusively of the shape of a product with one or more essential characteristics which are inherent to the generic function of the product and which consumers may be looking for in competitors’ products. The CJEU has also held that registration may be precluded if the shape of a good consists of a number of essential features of which some result from the nature of the good and some are necessary to obtain a technical result, which was clarified in Société des Produits Nestlé v Cadbury UK (C-215/14) concerning the protection of the shape of KitKat chocolate bars. In another chocolate-themed case, Chocoladefabriken Lindt & Sprüngli v. OHIM (C-98/11), the CJEU held that the shape of a chocolate rabbit could not be registered as a trademark since it was a common shape within the industry and therefore lacked distinctiveness.

Although right-holders earlier saw the 3D trademark as a way to make their IP eternal, the value of 3D trademarks can rightfully be questioned in light of recent case law. It also remains to be seen if, and to what extent, the Finnish Patent and Registration Office will adjust its registration policies due to the case KKO:2017:42.