Lindt recently failed in its attempt to stop a competitor, Riegelen, from selling Easter confectionery that looks remarkably similar to Lindt's famous chocolate bunny. Lindt relied on the fact that it has  a German trade mark registration for a sitting bunny wrapped in gold foil and featuring a red ribbon and a bell, but the court held that bunnies are old hat - especially come Easter-time - and that there was therefore no likelihood of confusion.

Shape trade marks, aka 3-D trade marks, are problematic. Although the shape of a product can clearly be registered as a trade mark – the definition of a 'mark' in the Trade Marks Act includes 'shape' – the fact is that it's very hard to register product shapes as trade marks.   For starters, the law says that a shape can't be registered if it's functional - an application to register the Lego block failed because it was deemed to be functional. And the courts seem to apply a stricter test for shapes (and indeed other unconventional marks) than they do for word marks (they deny this, but they do). The courts say that not only must you show that the shape has become distinctive, but you also need to show that the shape 'departs significantly from the norms or customs of the industry'.  The reason for this is that the courts feel that consumers don't normally regard things like product shape as an indicator of commercial origin, and that they will only do so if the shape is highly unusual. On top of that, I suspect, there is a lingering feeling that product shapes should be registered as designs rather than trade marks – a product shape can be registered as a design, and novelty rather than distinctiveness will be the criteria.

Lindt also failed in its attempt to get its bunny registered as a Community (EU) Trade Mark last year, despite the fact that it already had national registrations in a number of EU countries like Germany and Austria.  It joined a long list of failures. Although some applications get through - like the shape of the Mini Cooper- the majority fail, with the Bounty chocolate bar shape being a pertinent example.  I suspect that for a confectionery shape mark to succeed it will have to be truly unusual, like the Toblerone triangular shape (which I think is registered).

So, what about South Africa? There's not much legal authority here, but a few years back the Supreme Court of Appeal did turn down an application to register the shape of the Grunberger bottle for wine.  So there are difficulties here too!

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