UK: The Shape of Things to Come (Outsourcing & Technology)

Originally published January 2005

The European Trade Marks Directive explicitly provides for the registration of the shape of products and their packaging as trade marks. However, case law over the years has shown that the registration of shapes as trade marks is not straightforward. With regards the shape of packaging the road to registration would appear difficult and in the case of the shape of products near impossible. So what guiding principles can be gleaned from the case law to date in this area of trade mark law?

The first law trade marks

The well known case of Procter & Gamble v OHIM (BABYDRY) established the important, but maybe obvious principle, that a trade mark possesses a real distinctive character when it is capable of being understood by the public as a means of distinguishing between the goods or services of one undertaking and those of other undertakings.

This basic principle of trade mark law was expanded upon in the cases of Bosch v OHIM (Kit Pro and Kit Super Pro) and Nestle Waters France v OHIM (Shape of a bottle) in which it was held that marks falling within the provisions of Article 7(1)(b) of the Community Trade Mark Regulation, which prohibits the registration of marks which are ‘devoid of distinctive character’, are those which from the point of view of the relevant public, are commonly used in trade for the presentation of the goods and services concerned or there exists, at the very least, concrete evidence justifying the conclusion that they are capable of being used in that manner. Furthermore, in Rewe-Zentral v OHIM (LITE) it was found that the signs referred to in Article 7(1)(b) are incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods or services, thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition.

The basic principle of trade mark law explained above, established in BABY-DRY and expanded upon in later cases, is the guiding principle, which must always be remembered when dealing with the registration of shapes as trade marks. If a shape inherently or via use enables a consumer to identify the trade origin of the goods in question, then registration should be allowed. This simple, maybe obvious principle is often lost when one gets down to the intricacies of the registration of shapes as trade marks.

In Eurocool Logistik v OHIM (EUROCOOL) it was held that a minimum degree of distinctiveness is sufficient to render inapplicable the ground of refusal set out in Article 7(1)(b) of the Regulation. It was held in EURO-COOL that it was clear from the case law of the First Court of Instance (CFI) that the absence of distinctive character cannot arise merely from the finding that the sign in question lacks an additional element of imagination or a minimum amount of imagination. A trade mark is not necessarily a work of invention and is founded not on any element of originality or imagination, but the ability to distinguish goods or services on the market from goods and services of the same kind offered by competitors.

The European Court of Justice (ECJ) although holding that the shape of product which comes about purely as a result of the need to obtain a technical result is not registrable, held in the case of Koninklijke Philips Electronics NV and Remington Consumer Products Limited, that the shape of the article in respect of which the sign is registered does not require any capricious addition, such as an embellishment which has no functional purpose. Essentially if the overall impression of the shape is distinctive then registration should be granted, there is no need for an outrageous addition to make the mark distinct.

Thus, we are back to the basic principle of trade marks, and what EURO-COOL held was that all that is needed for a mark to be distinctive as a whole is some minimum degree of distinctiveness.

It has been upheld in various cases of Henkel v OHIM concerning the registration of the shape of washing liquid bottles that the distinctive character of a trade mark within the meaning of Article 7(1)(b) must be assessed by reference, first, to the goods or services in respect of which registration is sought, and secondly to the perception of the relevant public. That means the presumed expectations of an average consumer who is reasonably well informed and reasonably observant and circumspect. Also in assessing whether or not a shape has any distinctive character, the overall impression given it must be considered. Thus in assessing distinctive character the whole should be considered and not the individual component parts.

It was explicitly held in the case of Nestle Waters France v OHIM that a sign consisting of a combination of elements, each of which is devoid of distinctive character, can be distinctive provided that concrete evidence, such as the way in which the various elements are combined, indicates that the sign is greater than the mere sum of its constituent parts.

Accordingly when one is considering the question of whether a shape has ‘distinctive character’ one must follow a three part test: -

(a) What are the goods for which registration is sought,

(b) What are the perceptions and expectations of the consumer of those goods,

(c) Taking into account the first two points, the overall impression of the mark must be considered not the individual component parts.

It might be felt that the first part of the test is an easy question to answer. However, it needs remembering that the BABY-DRY case clearly established that the question of distinctive character must only be considered in relation to the specific goods for which registration is sought and not for those in similar fields.

It was recently confirmed in the case in Mag Instruments Inc v OHIM, which concerned the registration of the shape of a torch, that the criteria for assessing the distinctive character of three dimensional marks consisting of the shape of the product or its packaging are no different from those applicable to other categories of trade mark. It was held nonetheless, for the purpose of applying those criteria, the relevant public's perception is not necessarily the same in the case of a three dimensional mark of a product or its packaging as it is in the case of a figurative or word mark. Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging. In the absence of any graphic or word element it could therefore prove more difficult to establish distinctiveness in relation to three dimensional marks than in relation to word or figurative marks.

In Mag Instruments it was held that the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of distinctive character. Only a mark, which significantly departs from the norm or customs of the sector and thereby fulfils its essential function of indicating origin, is not devoid of any distinctive character. In the case of Mag Instruments the court found that any aesthetic qualities or the unusual original design of the Mag torch originated as variants of the common torch design, rather than shapes capable of differentiating the goods and on their own, designating commercial origin. There were a large number of variously shaped torches on the market and the shape of Mag's torches were not sufficiently distinct from the norm for such shapes to be taken as badges of trade origin. It was found that evidence merely showing excellence of design or the high level of the aesthetic or functional qualities of the products under consideration does not prove distinctiveness.

Therefore, an important principle established in the Mag Instruments Inc case is to assess firstly what is ‘the norm’ or ‘established custom’ with regards to the shapes of products or their packaging for the goods under consideration and then to assess whether the shape in question differs significantly from that norm. If the shape under consideration is a common variant of the product for which registration is sought, then registration will be denied. The logical end to such a reasoning is the possibility in markets where most traders use a standard shape of packaging, that relatively small differences to such a shape would be sufficient to warrant registration, whereas in the case of markets where a multitude of shapes are being used, the shape of the product or packaging in question must be all the more different.

The Mag Instruments Inc decision follows on from the Deutsche SiSi-Werke Gmbh & Co. Betriebs KG v OHIM case, which concerned the registration of the shape of pouches containing beverages, where the CFI held that the elements claimed by the applicant to be distinctive were simply common to the trade and in the words of the Mag Instruments decision did not differ sufficiently from the established norms or customs in the market.

It was also held in the Nestle Waters France case that the perceptions of the consumer is influenced by its level of attention, which is likely to vary according to the category of goods or services in question. In the Nestle Waters France case, which concerned the registration of the shape of bottle containing mineral water it was accepted that certain operators had for several years sought in the shape of the packaging the means to differentiate their goods from those of the competition and to attract the public's attention. The Court thus accepted that it was quite possible for the average consumer to perceive the shape of packaging in the mineral water sector as a badge of commercial origin. Essentially the Court of First Instance held that the consumer of mineral water had been educated to differentiate certain types mineral water by the shape of the packaging of the product. The aforesaid principle was confirmed in the recent CFI case between Henkel KgaA v OHIM dating from 24th November 2004 concerning the registration of the shape of a bottle for washing up liquid.

The principle of the establishing whether shape does in practice act as a distinguishing element in the purchasing process in a particular sector of the market, when one is considering the question of the registration of the shape of a product or its packaging, has also been established in UK trade mark practice. In the well known case concerning the registration of the shape of Viennetta ice cream, it was held that as ice cream products were principally sold in boxes and the shape of the ice cream was not seen until after the product had been purchased, the principal ‘badge of trade origin’ in the ice cream market are word marks. The Viennetta decision has been further strengthened by a recent UK Trade Marks Registry decision whereby the shape of the well-known Bounty chocolate bar was denied registration as again the product was wrapped and its shape was not revealed until after the product was purchased.

The price and ‘everyday nature’ of the product in question will also play a part in how much attention is paid to the shape of a product or its packaging by the purchasing public. In another case concerning Henkel KgaA v OHIM that considered the case of the registration of the shape of dishwashing tablets, the CFI found that given that such products were everyday items that the level attention devoted to their purchase would be low and thus the public would be unlikely to differentiate such a product by its shape.

So what conclusions can be drawn from all this case law? Well it would appear:

1. The registration of the shape of products would appear near impossible, given the Mag Instruments decision, which held that the shape of products, which derive from the shape of the product category itself, is not registrable. The shapes of the majority of products derive from some common shape of the product category as a whole. Although the Remington decision held that a shape need not incorporate a ‘capricious addition’ to be registrable, in the case of the registration of the shape of products it would appear that only such an addition would overcome the registrability criteria held in the Mag Instruments Inc case. It would seem that commercially it is unlikely that manufacturers would wish to incorporate such additional features to their products and thus, the registration of the shape of products would appear difficult. Further the shape of any product, which is everyday, cheap or wrapped in some way, would appear exceedingly difficult to register.
2. The registration of the shape of packaging would appear easier, but either an established practice must have developed in the market in question whereby the public have learnt to distinguish by the shape of packaging (Nestle Water France) or the shape in question differs to such an extent to the established norm that the mark ‘stands out’ (Mag Instruments). The later principle would appear to enable the registration of ‘unusual’ shapes of packaging where other traders use standard generic shapes in particular.

All in all the road to the registration of shapes as trade marks is difficult to follow.