Registering Shapes and Three-Dimensional Trade marks - March 2009

A trademark conveys the image, personality and the origin of the products to a customer. Through this information, the consumer will make an economic decision to purchase. Thus, trademarks are crucial in developing a company’s strategy.

Brand owners invest a lot of money in advertising campaigns and in market studies to find successful products that consumers are likely to buy. Brand owners should protect their valuable property against competitors aspiring to benefit from the attractive brand and therefore damaging the uniqueness of the trademark. With a high level of competition, transactions that must proceed rapidly and aggressive business behaviour, brand owners hoped they could get more protection for their brand by registering shape marks.

Section 1 (1) from the Trademark Act 1994 provides that: “a trademark means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.” This broad definition enables traders to use new types of trademarks such as three-dimensional trademarks or shape marks capable of being represented on a recorded or published form. These marks are signs consisting of a product’s shape, packaging or others three-dimensional signs.

Nevertheless, intellectual property authorities are reluctant to allow registration to three-dimensional trademarks. The idea behind this is to avoid excessive monopolies that would paralyse the market, competition and designers from creating innovative products.
With that in mind, this article will consider and move into the issues of registering a three-dimensional trademark following key questions: why should a product be protected by using a shape mark? How to overcome the refusal of registration by national authorities?

Why register a shape mark?

Registering is the best way to secure a trademark. The owner of a registered trademark has exclusive rights in that trademark. It means that no one else can use the trademark without consent.

The shape, product or the packaging of the product is represented more precisely on the register. The possibility to visualize the product three-dimensionally gives a better understanding of the quality of the product. Shape marks provide a useful tool to customs to seize counterfeit products. Even though registering a three-dimensional trademark presents advantages, applicants often face refusals from IP authorities.

Grounds for refusal of registration

Sections 3 and 5 of the Trademark Act 1994 set out two grounds for refusal of registration, namely absolute grounds and relative grounds. Absolute grounds, relating to the nature of the mark itself, refuse registration to signs that do not comply with the definition of a trademark given by section 1 (1) of the Trademark Act 1994. A trademark without any distinctive character cannot be registered. It is the same case for trademarks that describe the characteristics of goods or services.  A generic sign that entered the current language follows the same regime. Section 3 (2) states that a shape resulting from the nature of the goods themselves or which is necessary to obtain a technical result or which gives substantial value to the good cannot be registered. It provides a limitation to the trademark system for shape marks in order to maintain a balance between intellectual property rights. Relative grounds refuse registration if a later trademark is in conflict with an earlier trademark.

In Insurance Ltd v. Direct Line Insurance Plc in 13 December 2006 an insurance company registered a three-dimensional trademark representing a telephone on wheels in class 36 referring to insurance, financial and monetary services. Another insurance company tried to register as a three-dimensional trademark a mouse with wheels for the same type of services. The application was refused. The similarity between the two signs could lead the average consumer to confusion in believing that the two trademarks were linked.

Bongrain SA’s Trademark application in 17 December 2004 an applicant tried to register the shape of some cheese. Even though, the shape was unusual the Court preferred to refuse the registration to maintain free competition between traders in that sector of consumer goods.

The decisions concerning the acceptance of registration for shape marks are linked with the type of product. The more exclusive and rare the product is, the more IP authorities accept the application. For luxury goods, the purchaser will pay attention to the shapes of the goods to comply with the high standard of product he is looking for. The consumer knows exactly what product he wants to purchase. With the act of purchase, the customer wants the product to be linked with the manufacturer. That is the reason why IP authorities are keen to allow registration on luxury products, as there are no doubts about the intention of the purchaser.
On the contrary, common shapes will have difficulties in attaining registration. Does the consumer pay attention to the shape? Marketing people may answer that it is unconscious and that the consumer does not associate most shapes with brands.

How to convince IP authorities?

The European Court of Justice has concluded that three-dimensional trademarks followed the same requirements as traditional trademarks but in practice, national offices are reluctant to allow registration. The problem is that few three dimensional marks are seen as being distinctive enough.

A product shape or its packaging must clearly contrast from the ordinary item of commerce of the category of product concerned so a higher standard of distinctiveness is expected. The applicant will have to put more effort to prove the originality of the shape. For certain types of goods, three-dimensional trademarks are more appropriate to have a better perception of the product than word mark. Surveys on the average consumer perception of the shape as well as expert witnesses could be helpful in this area.

In theory, registering a three-dimensional trademark should not be more difficult than registering more traditional marks. In practice, trademark owners face complications especially in relation to consumer goods. As three dimensional marks become more common hopefully national office will offer clearer guidelines and fewer refusals.