The BIC company registered the shape of its renowned pens as a tri-dimensional Community trademark in 1997.

Further to customs seizure in Saint-Malo, France, BIC sought legal remedy against the alleged infringement, only to be naturally opposed by the defendant that the tri-dimensional trademark was invalid.

Indeed, Article 7.1 e) (iii) of the Community Trademark Regulation provides that a Community trademark may not “consist exclusively of […] the shape which gives substantial value to the goods.”

Such provision aims at avoiding that a trademark, which may be renewed without limitation in time, takes over other IP rights which may be extinguished sooner.

In its November 19, 2015 decision, the Court of Paris (“Tribunal de Grande Instance de Paris”) highlighted that “the
value granted by the shape of a product is substantial when the esthetical value is likely to dictate the consumers’ choices, when the shape is the determining factor in the buying process, and thereby of the commercial value of the considered product.”

However, in BIC’s case, instead of the aesthetic of the product, the determining factor was considered to be the value for money ratio, the durability and writing comfort. Consequently, the trademark has been upheld.

First publication: K&L Gates Trademark and Unfair Competition Bulletin, 01/2016 with Audrey Decima