UK: HARD CHEESE – The Potential Pitfalls of Registering Product Shapes as Trade Marks

Last Updated: 12 July 2005
Article by Brian Cordery and Danielle Onona

The possibility of registering product shapes as trade marks became a reality in the UK with the implementation of the Trade Marks Act 1994 ("TMA") when such shapes were specifically included within the definition of trade marks. Since the definition of trade marks was broadened in this way, there has been much debate over the issue of what exactly may be registered. However, in the past few years both OHIM and the ECJ have offered valuable guidance on how to assess inherent distinctiveness of three-dimensional trade marks including shapes of products. As a result, it is clear that inherent distinctiveness of product shapes will be difficult to prove. It is noteworthy that most of the decisions in respect of product shape trade mark applications have involved rejections of shapes where the owners have not filed evidence of use to support a claim to distinctiveness and secondary meaning. Solid evidence of distinctiveness can make all the difference.

Five Leading Cases

There are five leading cases in this area, each of which added incrementally to clarifying the law in this issue.

(a) Philips v Remington (ECJ Decision – June 2002)

Philips was the owner of a UK trade mark (pictured below) consisting of a two-dimensional picture of the top portion of a three-headed rotary electric shaver. Philips commenced proceedings in 1998 against Remington for infringement of the mark and Remington counterclaimed that the mark was invalid on, among other grounds, section 3(2)(b) TMA (the shape of goods which is necessary to obtain a technical result). The UK Court referred a question on the interpretation of this section to the ECJ. The ECJ responded that this section must be interpreted to mean that "a sign consisting exclusively of the shape of a product is unregistrable by virtue [of section 3(2)(b)] if it is established that the essential features of that shape are attributable only to the technical result". On this interpretation of the law, the English Court held the mark invalid.

(b) Henkel/Procter & Gamble’s Trade Mark Applications (ECJ Decision – April 2004)

Henkel and Procter & Gamble applied to register the shapes of detergent tablets as trade marks. A representation of one of the applications is set out below:

The question for the Court was whether the mark was devoid of distinctive character (section 3(1)(b) TMA). The ECJ held that the criteria for assessing the distinctiveness of three-dimensional shape marks was no different from those for assessing the distinctiveness of other categories of mark such as words or slogans. However, the Court went on to state that the public’s perception of product shape marks was different and, in particular, that the more closely the shape for which registration was sought resembled the shape most likely to be taken by the product in question, the greater the likelihood that the shape was devoid of distinctive character for the purposes of section 3(1)(b) TMA. It commented in particular that: "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".

(c) Mag Instruments’ Application (ECJ Decision of October 2004)

The applicant sought to register as a trade mark various shapes of torches as shown below:

This case followed the Henkel/Procter & Gamble decision in holding that the criteria for the assessment of distinctiveness is the same for all categories of marks but that the public’s perception may be different. The Court may even have gone further by holding that: "only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin, is not devoid of distinctive character." Surprisingly, it seems that no evidence of acquired distinctiveness was relied on even though the "Maglite" torch design is quite well known in the EU.

(d) Daimler Chrysler v OHIM (CFI March 2003)

The motor car manufacturer Daimler Chrysler sought to register the shape of a vehicle grill. A representation of the mark is set out below:

The CFI accepted this application and held that grills have become an essential part of the look of land vehicles and a means of differentiating between existing models on the market. It was true that the grill served to ventilate the engine but the fact that a trade mark had both a distinguishing purpose and a functional purpose should not have any bearing on the question of distinctiveness. This was particularly the case if the former distinguishing role outweighed the latter functional role. The grill in question was adjudged to be an unusual design and was not commonplace at the date of application. It was therefore capable of possessing the degree of distinctiveness to be accepted for registration. The Daimler Chrysler case can be neatly contrasted with the Philips v Remington decision.

(e) Bongrain’s Trade Mark Application (UK Court of Appeal December 2004)

Here the applicant sought to register the three-dimensional shape of a cheese (in flower-like form) as shown below:

The Court held that the mark was devoid of distinctive character. It also held that there was a public interest in preserving certain signs for other traders to use in relation to the same or similar goods to maintain freedom of action and competition. The decision further stated that the public’s perception of the sign was of paramount importance and that the public was not generally accustomed to shapes conveying trade mark significance (i.e. acting as a source of origin).

Conclusion

It is beyond question that shapes of products are registrable as trade marks in the UK and other countries of the European Union. The Toblerone chocolate bar is perhaps a leading example. However, in the absence of acquired distinctiveness, only shapes which are unusual or depart significantly from the norm in the trade and which the public are likely to perceive as badges of origin will be accepted for registration. This is entirely consistent with the registrability of all types of marks. The recent shape marks cases discussed above show that distinctive character must be assessed by reference to the products in question and then by reference to the perception of the relevant public. Inherent registerability is thus difficult to prove. It may, however, be easier to register a mark if it is demonstrated that a shape mark has in fact acquired distinctiveness through use.

In summary, a global assessment of the above decisions is that:

1. If a mark performs a dual role of technical function and trade mark function (i.e. as an indicator of origin), following the Daimler Chrysler case, it should be possible to register the shape as a trade mark if the trade mark function outweighs the technical function.

2. The courts have been careful to emphasise that the test for registrability of shape marks is no more stringent than that for other categories of mark. However there is no doubt that the threshold for registrability is set higher. The ECJ has justified its approach on the basis that consumers are less used to perceiving shapes as indicators of origin. The courts also recognise that there is a public interest in the maintenance of freedom of competition by not allowing commonplace shapes to be registered.

What brand owners can do to make their shape marks more registrable

A. Make it clear in advertising and other promotions that the shape of the product is as important as the brand name, get-up, etc. A link must be encouraged between the product and the shape in the eye of the relevant consumer, to the extent that whenever the consumer sees the product in that particular shape, they know that the product emanates from your company. The Coca-Cola Company is very adept at featuring its famous glass bottle in advertisements even though in the UK most of its product is sold in cans or plastic bottles. This has proved to be a successful way of acquiring and maintaining distinctiveness in the bottle shape.

B. Ensure that the shape of the product is visible at point of sale, so that consumers make the link between the product and its shape (and any supplementary trade marks, brand names, etc) at the point of purchase.

C. To help overcome objections of a lack of distinctiveness keep records of market share and sales figures for the product throughout its product life and copies of advertising and promotional materials. Consumer familiarity with a product’s shape can be agreed to be inferred if such figures show a sufficient level of consumer exposure to the shape.

D. File for national or Community registered designs if the shape of the product is sufficiently new.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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