14 March 2019Trademarks

Decorative fabrics eligible for TM registration: CJEU

The Court of Justice of the European Union (CJEU)  has ruled that fabrics with decorative designs are eligible to be registered as trademarks.

The CJEU’s Fifth Chamber issued its  ruling in Textilis v Svenkst Tenn today, March 14,, after a Swedish appeals court sought clarification on European case law.

The Swedish court asked firstly whether an EU regulation governing the eligibility of certain trademarks was applicable to marks registered before its implementation.

Secondly, the court sought clarification on whether, under this regulation, a two-dimensional product such as a fabric decorated with a sign should be treated in the same way as shapes.

In the decision, the Fifth Chamber found that “two-dimensional decorative motifs” such as fabrics consisted of more than than the shape of the goods in question, and so should be treated differently.

Svenskt Tenn brought a trademark infringement case against Textilis, a UK textiles company, for infringing its ‘Manhattan’ mark for a decorative fabric design featuring a stylised map of the New York City borough.

Textilis filed a counterclaim seeking to have the mark invalidated, arguing that “signs constituted by the motif of a fabric can not be registered as a mark” (translated from French).

A Stockholm district court sided with Svenskt Tenn, finding that Textilis had infringed the Swedish company’s mark, as well as the copyright protecting the design.

Textilis brought the case to the Stockholm Court of Appeal, which stayed proceedings and referred the case to the CJEU in December 2017.

The mark, which covers goods such as fabrics and textiles, was registered in 2012.

The UK company cited Article 7 of EU Regulation No o 207/2009 which says that signs “which consist exclusively of the shape which gives substantial value to the product” cannot be registered as trademarks.

Svenskt Tenn rebutted that “pattern-shaped signs” were eligible to be registered as marks.

The law was amended in 2016 with EU Regulation 2015/2424, which clarified that marks which derived their substantial value from the “form, or [an]other characteristic of the product” were ineligible for registration”.

In its ruling, the CJEU said that the regulation did not apply to marks registered before its implementation, as it did not contain provisions expressly allowing for this.

The court also found that a sign such as the ‘Manhattan’ mark, which consists “of two-dimensional decorative motifs” on a piece of fabric or paper, was not exclusively constituted by the shape of the goods.

This was because these goods, as the ‘Manhattan’ fabric, contained “decorative elements”.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories like this sent straight to your inbox.

Today's top stories:

IPOS sides with Isetan over Scotch Whisky in GI feud

CITMA 2019: No-deal Brexit could harm single person entities, says IPReg chair

CITMA 2019: Blockchain could be the future of protecting fashion, lawyer says

AFC cancels beIN’s exclusive football rights in MENA region

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at