The Court of Appeal decided to stay proceedings and to refer the following seven questions on the interpretation of the Directive to the Court:
'1. Is there a category of marks which is not excluded from registration by Article 3(1)(b) to (d) and Article 3(3) of the Council Directive 89/104/EEC (the Directive), which is none the less excluded from registration by Article 3(1)(a) of the Directive (as being incapable of distinguishing the goods of the proprietor from those of other undertakings)?
2. Is the shape (or part of the shape) of an article (being the article in respect of which the sign is registered) only capable of distinguishing for the purposes of Article 2 if it contains some capricious addition (being an embellishment which has no functional purpose) to the shape of the article?
3. Where a trader has been the only supplier of particular goods to the market, is extensive use of a sign, which consists of the shape (or part of the shape) of those goods and which does not include any capricious addition, sufficient to give the sign a distinctive character for the purposes of Article 3(3) in circumstances where as a result of that use a substantial proportion of the relevant trade and public
(i) associate the shape with that trader and no other undertaking;
(ii) believe that goods of that shape come from that trader, absent a statement to the contrary?
4. (i) Can the restriction imposed by the words if it consists exclusively of the shape of goods which is necessary to achieve a technical result appearing in Article 3(1)(e)(ii) be overcome by establishing that there are other shapes which can obtain the same technical result or
(ii) is the shape unregistrable by virtue thereof if it is shown that the essential features of the shape are attributable only to the technical result or
(iii) is some other and, if so, what test appropriate for determining whether the restriction applies?
5. Article 3(1)(c) of the Directive applies to trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose ... of the goods or service. Article 6(1)(b) of the Directive applies to the use by a third party of indications concerning the kind, quality, quantity, intended purpose ... of goods or services. The word exclusively thus appears in Article 3(1)(c) and is omitted in Article 6(1)(b) of the Directive. On a proper interpretation of the Directive, does this omission mean that, even if a mark consisting of the shape of goods is validly registered, it is not infringed by virtue of Article 6(1)(b) in circumstances where
(i) the use of the shape of goods complained of is and would be taken as an indication as to the kind of goods or the intended purpose thereof and
(ii) a substantial proportion of the relevant trade and public believe that goods of that shape come from the trade mark proprietor, absent a statement to the contrary?
6. Does the exclusive right granted by Article 5(1) extend to enable the proprietor to prevent third parties using identical or similar signs in circumstances where that use was not such as to indicate origin or is it limited so as to prevent only use which wholly or in part does indicate origin?
7. Is use of an allegedly infringing shape of goods, which is and would be seen as an indication as to the kind of goods or the intended purpose thereof, none the less such as to indicate origin if a substantial proportion of the relevant trade and public believe that goods of the shape complained of come from the trade mark proprietor, absent a statement to the contrary?
Analysis of the questions
Definition of the issue in the main proceedings