Round 2 Bang & Olufsen - BeoLab 80000 shape mark again refused, this time under "shape gives substantial value to goods"

In R-497/2005-1, the Board of Appeal considered again the registrability of a shape of a product mark for Bang & Olufsen's BeoLab
8000. As discussed already (see previous news item and para 3-075 of Trade Mark Chapter), the CFI had held that Boards of Appeal had been wrong to reject the shape mark
under Art.7(1)(b) & (c) as the shape did depart
significantly from what was customary in the relevant sector. It thus remitted the case back to OHIM.

The Board of Appeal decided that this
time, it was objectionable under Art. 7(1)(e)(iii) (even though such had not been a ground taken by the original examiner). It held that the
shape gave substantial value to the goods. It held that
Art.7(1)(e)(iii) should be interpreted to mean that if the shape had
the potential to determine the consumer's purchasing behaviour so that
the relevant public bought the product mainly for the value of its
shape, then it was objectionable under the provision. As there was no
element in the loudspeaker which did not impact on the design, the
Board concluded that it was objectionable under Art.7(1)(e)(iii). Bang
& Olufsen have filed an appeal to the CFI (T-508/08).

The Board of Appeal's decision follows the Court of Appeal's decision that Art.7(1)(e)(iii) is concerned with aesthetic shapes and not technical shapes. If upheld by the CFI, then the effect of Art.7(1)(e)(ii) & (iii) is to exclude the registration of three-dimensional designs which are dicated by technical or aesthetic considerations. This would permit the registration of arbitrary, capricious designs which depart from normal customary practices but not otherwise. In the author's opinion, this would be right. There is a real danger of trade mark laws being used to provide perpetual protection for industrial designs. Indeed, it is more likely that a consumer will view an arbitrary, capricious, non-technical, non-aesthetic design as an indication of trade in the same way that an arbitrary, non-descriptive word mark is more inherently likely to distinguish than a mark which is descriptive and thus refers to some underlying characteristic of the goods or services.