How to encode POLs related to 3D marks – differentiation between “shape of the

goods” (the product itself) and “packagings”

This document contains very important and updated rules about how to enter POLs for 3D
marks. As you know, for 3D trademarks, under POL 4, there’s always the choice between:

-shape of the goods

-packagings

We noticed there’s a lot of uncertainty from the side of the analysts when it comes to
choosing between the two or even choose both.

In some situations, it’s straight forward:

In other situations though, it’s unclear

Here are the rules to be followed:

1.Make sure your trademark is indeed a 3D trademark and NOT a figurative one! If you have
doubts, always check on the competent office’s website!

2. Open the binder and have a look at the image and the description entered by the analyst, in
order to understand what the product is about. Check at the same time whether the Locarno
class was duly entered by the analyst and add it if it’s missing. LOCARNO CLASSES should
always be added for 3D trademarks.

3. Then, check the Nice class(es) covered by the mark. The Nice classes are crucial to
distinguish between a “product itself” and a “packaging” (a bottle in class 21 will be a
“product itself”, as class 21 contains bottles, whereas a bottle in class 32 will be a
“packaging” for liquids such as water, juices or beer)!!

4. Once you’ve detected the Nice class, think of whether the trademark is a “product itself” or
a” “packaging”.
5. Last but not least, specify through the POLs whether it’s a “Pure” 3D trademark or one
with verbal or figurative elements (colour is a “figurative” element).

Examples:

Example 1: 3D trademark for perfumes in class 3 that was found to be not distinctive

In a situation like this, the analyst should select POL 4.1.3.1.1, Sign devoid of any
distinctive character, and then 3D trademark and then from the two options “Packaging”
or “Shape of the goods”, he should go for the first option, “Packaging”. He should also
encode “Pure”, as the packaging doesn’t contain any verbal or figurative elements, nor it is
applied/registered in color.

In order for the analyst to decide whether he should encode “Packaging” or “Shape of the
goods”, it is crucial to check the Nice classes for which the 3D trademark is filed/registered.
So, in this example, as protection is sought for perfumes in class 3 and the sign itself is a 3D
one that consists of a perfume bottle (the product itself is the perfume (the liquid) and the
sign is the packaging of the perfume) the analyst should select “Packaging” and NOT “Shape
of the goods”.

Please note that this distinction between distinctiveness of 3D trademarks in “Packaging” and
“Shape of the goods” is made for internal purposes (e.g. reports for the clients).
Thus, in the decision, it will probably not be discussed as such but only generally (they will
refer to the distinctiveness of the specific 3D trademark without going any further to discuss
whether it’s the product itself or its packaging for which protection is sought).

Example 2: 3D trademark for containers in class 21 that was found to be not distinctive
In a situation like this, the analyst should select POL 4.1.3.2.1, Sign devoid of any
distinctive character, and then 3D trademark and then from the two options “Packaging”
or “Shape of the goods”, he should go for the second option, “Shape of the goods”, as the
product itself is the perfume bottle (the container). He should also encode “Pure”, as the
product itself doesn’t contain any verbal or figurative elements, nor it is a one in color.

Again, in order for the analyst to decide whether he should encode “Packaging” or “Shape of
the goods”, it is crucial to check the Nice classes for which the 3D trademark is
filed/registered. So, in this example, as the product itself is the perfume bottle/ container of
class 21 and they want to register the bottle as a 3D trademark, the analyst should select
“Shape of the goods” and NOT “Packaging”.

Example 3: 3D trademark for a display stand for perfumes in class 20 that was found to be
not distinctive

In a situation like this, the analyst should select POL 4.1.3.2.2, Sign devoid of any
distinctive character, and then 3D trademark and then from the two options “Packaging”
or “Shape of the goods”, he should go for the second option, “Shape of the goods”, as the
product itself is the display stand (the furniture). He should also encode “With verbal or
figurative elements”, as the product itself contains some verbal elements (FRAGRANCIAS
DEL MUNDO EAU DE PARFUM).

As in the previous examples, in order for the analyst to decide whether he should encode
“Packaging” or “Shape of the goods”, he has to check the Nice classes for which the 3D
trademark is filed/registered. So, in this example, as the product itself is the display stand of
class 20 and they want to register the stand as a 3D trademark, the analyst should select
“Shape of the goods” and NOT “Packaging”.

Example 3: 3D trademark for a container for salt in class 21 and salt in class 30 that was
found to be not distinctive

In a situation like this, the analyst should select POL 4.1.3.1.2 AND POL 4.1.3.2.2, Sign
devoid of any distinctive character, and then 3D trademark and then both of the two
options “Packaging” AND “Shape of the goods”, as the product itself/“Shape of the goods”
is the salt container in class 21. However, as the applicant, applied for salts in class 30, then
the container is at the same time the “Packaging” of the product for class 30. He should also
encode “With verbal or figurative elements”, as the sign is applied for in yellow color (so
with figurative elements).

NOTE: Please remember to always check the legal basis of your action, most often in the
beginning of the decision! It is important whether the judge/examiner uses as legal basis
DISTINCTIVENESS- DESCRIPTIVENESS (our POL 4/ art. 7(1)(b)- art. 7(1)(c) of the
EUTMR) AND/OR SHAPES THAT ARE EXCLUDED FROM TRADEMARK
PROTECTION (our POL 2/ art. 7(1)(e) of the EUTMR), as these are separate legal grounds!

For a trade mark to possess a distinctive character within the meaning of Article 7(1)(b)
CTMR, it must serve to identify the product in respect of which registration is applied for as
originating from a particular undertaking, and thus to distinguish that product from those
other undertakings ⇒ POL 4

Article 7(1)(e) CTMR explicitly singles out certain three-dimensional marks by listing
specific grounds for refusing their registration. Under Article 7(1)(e) CTMR, signs which
consist exclusively of (i) the shape which results from the nature of the goods themselves, or
(ii) the shape of goods which is necessary to obtain a technical result, or (iii) the shape which
gives substantial value to the goods, cannot be registered or if registered are liable to be
declared invalid pursuant to Article 51(1)(a) CTMR ⇒ POL 2

Please also make the difference in a discussion of shapes as a distinct legal basis than that of
distinctiveness and shapes discussed in the context of distinctiveness that should be encoded
under POL 4.1.3.2 (which will soon be renamed from “Shape of the goods” TO “Product
itself”)!