One of the still unresolved questions of trade mark law is under what circumstances a shape mark is not eligible for protection because it consists of a shape that gives substantial value to the products for which protection is sought. The CJEU touched upon this question in the Benetton/G-Star-case decided on 20 September 2007 (Case C-371/06), but did not resolve it. In its decision of 23 December 2011 the Dutch Supreme Court referred new questions to the CJEU in a case on a 3D mark registered by Revillon for chocolate products and consisting of the shape of a branch of a vine:

The case concerns an invalidation request submitted by a competitor of Revillon, arguing that the trade mark consists exclusively of a shape that gives substantial value to the goods. The Court of Appeal of Den Bosch rejected this argument on the ground that consumers would be influenced mainly by other values, such as the taste of chocolate.

The Dutch Supreme Court referred the following questions to the CJEU:

1. Does the ground for refusal or invalidity set out in Article 3 (1) (e) (iii) of Directive 89/104/EEC, as codified in Directive 2008/95, i.e. that the sign consists exclusively of the shape which gives substantial value to the goods, involve consideration of the motive(s) of the relevant public for the purchase decision?

2. In order for a shape to give "substantial value to the goods" within the meaning of the abovementioned rule:

(a) is it necessary that the shape be regarded as the main or predominant value, in comparison to other kinds of value (such as taste and composition in the case of foodstuffs)?

(b) Can a shape give "substantial value to the goods" if, besides that main or predominant value, the goods also have other kinds of value that can also be regarded as substantial?

3. Is the perception of the majority of the relevant public decisive for the answer to question 2, or can the court hold that the perception of a part of the public is sufficient to justify viewing the value in question as substantial within the meaning of the abovementioned provision?

It will take at least a year before we know the CJEU's answers to these questions.

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