It is often said that “form follows the function” but the keynote speaker at this year’s MARQUES Conference, Aurel Aebi of Atelier Oï, offered a new idea: “Form follows the emotion.” Using some beautiful examples of designs for companies such as Louis Vuitton, Pringle and Rimowa, he focused on values such as sustainability and creativity. “We like to design moments (not products),” he said.

The next speaker in the opening session, “Mark Your Design”, Laurence Morel-Chevillet of BVLGARI, echoed these views, saying: “Design is emotion.” She discussed how Bulgari created a Brand Bible which encompasses its company values.

Laurence said Bulgari typically files international design registrations through the Hague Agreement: “We begin with an international registration covering the minimum countries possible and then take the six months to decide where to extend. We tend to protect everything by drawings as it tends to give larger protection.” The biggest challenge it has is enforcement against similar designs.

The company also files 3D trade marks where possible. “We still have difficulties in some countries. But we have already enforced our rights based on this trade marks,” said Laurence. It has recently applied for a trade dress registration at the USPTO for the design of its shop on Fifth Avenue, New York.

In the third presentation, Jesse Hofhuis of Hofhuis Alkema Groen discussed “design-integrated source identifiers”, which he defined as “a common denominator integrated into the design of different products form one source”. These include the Louboutin red sole and the Burberry pattern, which Jesse described as “increasingly popular and iconic”.

A design-integrated source identifier is not primarily a design effort and may not reach the threshold for protection under copyright law, but functions like a traditional mark. The value is in the goodwill rather than the design – so they should be protected as trade marks, said Jesse.

But there are three hurdles such design-integrated source identifiers have to meet: first they must be a sign (see the Dyson judgment C-321/03); second, they must have distinctive character (Henkel judgment, C-218/01 and X Technology Swiss, T-547/08); third, they must not fall under the “shape or another characteristic” exclusion in Article 4(1)(e) of the Trade Mark Directive. On this third point, Jesse discussed the US functionality doctrine and the “bumpy road” of the shape exclusion in EU trade mark law and the term “substantial value to the goods”. He referred to several CJEU cases including:

• Philips (C-299/99)
• Hauck (C-205/13)
• Benetton C-371/06

“We don’t really know when a design element is of ‘substantial value’ to the goods. We don’t know what ‘another characteristic’ is.” Also, does the exclusion apply to the design of an entire product, or also to signs applied to many different products Is it applicable to signs unprotectable under copyright and design law? Is it applicable only to primarily design efforts, or also to source identifiers?

regarding the retrospective effect of the new Directive on existing marks. And, while the exclusion already applies to EU marks, it does not apply to national marks until the Directive is implemented, and the deadline is January next year.

Jesse said it was hoped that the recent judgment in Louboutin (C-163/16) would address all these questions, but the opinion was very short and did not resolve many issues. However, a question has been referred in C-21/18 Textilis 

This session was moderated by Robert Stutz of Beutler Künzi Stutz. The MARQUES Annual Conference takes place this week, and there will be more reports on the Class 46 and Class 99 blogs between now and Friday.