Thanks to the curves of the Coca-Cola bottle, the triangular shape of the Toblerone chocolate bar and the distinctive configuration of the Volkswagon Beetle, trademark practitioners are increasingly identifying that a shape can function as a trademark. But how do you know if the 3-D device, style of packaging or shape of your product is registrable as a trademark? Mark Hiddleston continues our series on less conventional IP with a look at protecting 3-D devices.

Registering elements of a product’s packaging or shape as a trademark can help a company gain a significant advantage over its competitors. But with the international courts – in particular, the European Court of Justice (ECJ) – keen to acknowledge the importance of keeping signs, such as shapes, available for use by third parties to stimulate competition, protecting such devices involves careful planning and a keen eye on rulings as they pass through the courts.

Current EU law
Since the unification of EU trademark law and the establishment of the Community Trade Marks Office (CTMO), there have been a number of cases concerning the registration of 3-D trademarks. Further judicial discussion will no doubt follow in the future, but some key principles appear to be emerging so far. These tend to focus on what can not be registered, rather than can, but at least provide some kind of indication of the possible success (or failure) of individual applications.

As with other types of mark, the UK Trade Marks Act and CTM Regulation disallows any 3-D trademark applications where the shape is found to be devoid of any distinctive character or simply descriptive of the product. Simply put, the closer the relevant shape resembles the shape most likely to be adopted for the product, the greater the likelihood that the trademark will be considered devoid of distinctive character.

Specifically to 3-D trademarks, the UK Trade Marks Act and CTM Regulation also refuse applications where the 3-D design is judged to be: as a result of the nature of the goods themselves (as a lemon design would be to a lemon-related product); a technical function of the product (as a shaver head would be to an electric shaver); or a means of adding substantial value to the goods. In other words, trademark law bars from registration any shape that is deemed to have utilitarian or aesthetic purpose.

Despite such stringent ruling, however, the ECJ have repeatedly acknowledged that 3-D trademarks are in principle registrable. The shortfall comes in their perception that while the public is used to identifying word marks and figurative marks as ‘trademarks’, they are not necessarily able to identify 3-D or shape trademarks as such. However, registration may be possible if the applicant is able to demonstrate that the consumer is able to distinguish the goods in question as theirs.

This will probably mean in practice, filing evidence of the past use of the 3-D shape or device in the relevant EU territory. Tactically limit your application to 3-D devices that are significantly different from the norm and registrations should be possible as a result.

The UK Trade Marks Act and CTM Regulation disallows any 3-D trademark applications where the shape is found to be devoid of any distinctive character or simply descriptive of the product

Adding design marks to the debate
For many, the registration of a design mark would be a more suitable method of protecting their products. And, given that the registration of aspects of a product’s shape as a trademark or as a registered design are not mutually exclusive, there are benefits for a company to register the shape of its products as a registered design, whether in the UK, the EU or further afield. The speed and inexpensive nature of registration and the limited examination conducted by the UK Designs Registry and the Community Designs Office, compared with the rigorous examination of a trademark application by the CTMO and national Trade Marks Registries, also make design registration an attractive option in the UK and the EU at least.

Better still, design marks protect the look that has been deliberately given to a product – in particular it’s texture, lines and shape – and as such would seem the natural vehicle to protect 3-D shapes. However, that isn’t to say designs are necessarily easier to register. Applicants also face restrictions which must be overcome. For example, Community design registrations are only available for ‘new’ designs or a design first published within a 12-month grace period. There is no similar
restriction for trademarks. Indeed, it may be easier to obtain registration for a shape or 3-D device once it has been used for a number of years.

The most sensible approach, therefore, is to assess such shapes on a case-by-case basis. The choice between designs and 3-D trademarks comes down to the suitability of the product itself and the length of time it has been on the market.

CAN I REGISTER MY SHAPE PRODUCT AS A TRADEMARK IN EUROPE?

1. Is the shape used identifiable as an individual feature of your product and not just universal to your industry?
2. Is the shape novel to the product and not just a reflection of the nature of the goods themselves (a light bulb shape, for example)?
3. Is the shape an innovative design and not just a result of the product’s technical function (the shape of an electric shaver, for example)?
4. Can you justify the shape in terms of pricing? If the shape adds substantial value to the goods to the point where you would you be able to produce a cheaper product with a different design, EU registration will be opposed.

CAN I REGISTER MY 3-D DEVICE AS A TRADEMARK IN THE US?
Under current US law, distinctive shapes of products, packages and 3-D devices can be registered and enforced in the courts as trademarks (often called ‘trade dress’ in the territory), as long as the applicant can prove that the design is not function led and that it is distinctive from other existing marks. As in the UK and the EU, however, trademark owners must also show that potential customers identify the protected shape as belonging solely to their product, if they are to stand any chance of legislating against potentially infringing 3-D shapes.

To protect the distinctiveness (or acquired distinctiveness) of the 3-D device, the trademark owner would be wise to highlight the product’s individual shape whenever possible, and to vigorously enforce their trademark rights by monitoring their product in the marketplace and legislating against any potentially infringing shapes or designs.

Mark Hiddleston is a trademark attorney at Elkington and Fife LLP and co-editor of the United Kingdom Trade Mark Handbook, the leading authority on trademark practice in the UK

This article first appeared in IP Review, issue 10

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