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Registering the shape of a product has been possible in Europe since the 1995 Trade Marks Directive, but applicants have had mixed experiences in trade mark offices and the courts when seeking protection. Many applications struggle to meet the requirements for registration, in particular that a shape mark must have distinctive character – though the approach that the courts will take in assessing this requirement is now well settled and considers both the goods or services for which protection is sought and the perception of them by the relevant public. There are also important exceptions to registrability: shape marks cannot be registered where the sign consists exclusively of a shape resulting from the nature of the goods themselves, one that is necessary to obtain a technical result or one that gives substantial value to the goods. Moreover, in enforcement, there is some evidence that only a narrow scope of protection is permitted. These trends mean brand owners should keep other means of protection in mind, including copyright, patents and design rights. However, despite these challenges, shape marks are likely to remain an important consideration in protection products and packaging. |
Protecting product ranges from copycat imitations is a clear priority in the current economic climate. One option that may assist is the registration of a trade mark for the shape of a product. This is open to both new and well-used product designs. However, recent case law suggests that the registration and maintenance of so-called shape marks may not be as straightforward as the authors of the Trade Marks Directive (89/104 EEC – now 2008/95 EEC) may have intended 20 years ago when the ability to trade mark shapes was introduced. There is however a substantial body of jurisprudence in the context of shape marks that gives some guidance. So why, despite the development of jurisprudence by the European and national courts, is it sometimes difficult to obtain the protection offered by a shape mark, and is it worth having?
What is the attraction of a shape mark registration?
As with all Community trade mark (CTM) registrations, a successfully registered shape mark provides the owner with an effective monopoly for the mark, in the relevant field of goods. The owner will be able to prevent unauthorised use by a third party in relation to identical or similar marks where used on identical/similar goods while the registration remains in force (see enforcement below). For a CTM, this protection will last for an initial period of 10 years, but with renewal periods of 10 years available to protect the mark indefinitely, provided that the use criteria set out in the Directive are met.
In the area of shape of products or packaging, this is particularly attractive, with the ability to protect a design of product or packaging from infringement by competitors, should their products or packaging look too similar. Added to this, the structure of the trade marks regime and the ease with which registers can be searched gives a registration a deterrent value. There are therefore strong incentives to seek trade mark protection. The potential of registration is far-reaching and raises the possibility of products or packaging enduring over time to become iconic shapes identifiable immediately as the goods of one owner, such as the Coca-Cola bottle or the Ferrari Testarossa car. Even in areas of fast-moving design development, where the practical value of the trade mark protection may be limited to a finite period, if the protection is obtained, it can be sufficient to give the owner a valuable competitive edge.
Of course one has to balance against the value of a registration the cost of obtaining the protection. If obtaining shape marks was straightforward, the fees charged by OHIM (€1600 for a filing in up to three classes) would be good value. However, the costs can expand significantly if the registration is not straightforward. Despite this, many companies clearly believe that protection is worth pursuing. An illustration of this is Lego's further CTM application for a square Lego brick, filed in December 2008 following the cancellation of its rectangular Lego brick mark in a November 2008 decision by the Court of First Instance (CFI).
What can be protected as a shape mark?
Although there was some debate initially following the implementation of the Trade Marks Directive, since the ECJ's decision in Philips v Remington (C-299/99) it has been clear that, aside from the specific provisions expressed to apply to shape marks (see below), the basic requirements for registration are that a sign is capable of graphical representation, and also capable of distinguishing the goods or services of one undertaking from those of other undertakings (Article 2 of the Directive) and those under Article 3 of the Directive apply to shape marks in the same way as other marks. The ECJ in the Philips case rejected the idea that had been raised in the UK courts referring the matter, that a shape mark needed something additional over and above the basic shape of the goods (the "capricious addition" argument) to be capable of registration.
Requirements for registration of a shape trade mark |
It must be a sign
The shape must NOT be
Where a mark is not inherently distinctive, it can overcome the objections to registration if it has, through use, become distinctive – but only in relation to grounds that it is devoid of distinctive character; a sign which designates the kind of goods; or a sign which is customary. |
Graphical representation
The graphical representation of a CTM shape mark must, as with other types of CTM, be sufficiently clear, precise, self contained, easily accessible, intelligible, durable, unequivocal and objective (Sieckmann C-273/00). The Regulation provides that an application for a shape mark must contain an indication of that, and "the representation shall consist of photographic reproduction or a graphical representation of the mark". The representation may contain up to six different perspectives of the mark.
It is clear that the graphic representation as submitted and shown on the register (if successful) will be the mark to which the relevant rules will apply. This was relevant in the Lego case, where the trade mark filed contained only one representation of a rectangular Lego brick. The representation showed the brick and the top side including the studs, but did not show the underside of the brick which was hollow. The CFI held that no consideration should have been given to the hollow underside of the brick as it did not form part of the registration. This followed the approach taken in Nestlé v Mars where Mars successfully opposed Nestlé's application to register a shape mark covering the tube used to package M&Ms. Mars' own prior registration covered not only a labelled version of its Smarties tube, but also a "naked" version with no decoration.
In many cases there will be no question as to which views of the shape need to be filed as part of the application. However, in some cases, it may be more difficult, especially if there are concerns that the mark may fall foul of one of the specific shape exclusions such as a shape that is required to obtain a technical result.
Capable of distinguishing the goods and services of one undertaking
Showing that a shape mark is capable of distinguishing the goods and services of one undertaking from those of another undertaking is not straightforward. Standing behind this requirement is the principle that the primary function of a trade mark is to act as a badge of origin. Whether shape marks are capable of doing this has been the subject of extensive discussion, both in the generality, but also in specific cases where the courts explore the issue as part of the question of whether a shape mark has distinctive character (see below).
Despite the ECJ finding in Philips v Remington that shape marks were no different from other types of mark in terms of application of the provisions of the Directive, it has subsequently been recognised in Henckel (C-457/01P) that there is a practical difference, insofar as the public often simply do not regard the shape of goods or their packaging as an indication of origin in the absence of any graphic or word element. This has led the ECJ to conclude that it will be easier to show that a shape mark can fulfil its essential function of indicating origin when a design significantly departs from the norm or customs of the sector in which registration is sought (Henkel, see also Storck 1 C-24/05 for a summary of the position). However, in the UK, the Court of Appeal held that just because the shape concerned is unusual for the goods in question, it does not follow that the average consumer will automatically see that shape as being an indication of origin. This case before the Court of Appeal concerned an unusually shaped cheese (flower-shaped) and the court held that there was insufficient evidence that the relevant public regarded the shape as an indication of origin (Re Bongrain SA's trade mark application 2004).
In addition, the ECJ and CFI have articulated a concern that to allow common shapes to be the subject of trade mark protection would be anti-competitive. In cases relating to both rectangular dishwasher tablets (Henckel) and cylindrical torches (Mag Instruments), the courts found that the marks applied for were insufficiently distinctive on the basis that they were minor variants on common shapes.
In addition to meeting the basic requirements to be a trade mark, a shape mark must not fall foul of any of the absolute grounds of refusal specified in Article 3 of the Directive. These are listed in the box above. Of particular relevance to shape mark registrations are the need to show that the shape is not devoid of distinctiveness and in cases where the shape mark is also the product, to show that the shape does not fall foul of the additional requirements for shape marks. Even if a mark can overcome these, the relative grounds of refusal (Article 4 of the Directive) apply to shape marks in the same way as other trade marks.
Shape marks and distinctiveness
The requirement that a shape mark must have distinctive character is often where applications falter. However, the approach that the court will take is well settled at least in its formulation. The distinctive character of the trade mark will be assessed:
by reference to the goods or services in respect of which the registration has been applied for; and
by reference to the perception of them by the relevant public.
The relevant public consists of average consumers of the goods in question who are reasonably well informed and reasonably observant and circumspect (Linde, C-53/01 to C-55/01 and Henckel C456/01P and 457/01P).
Further gloss added in shape mark cases includes:
The amount of attention that the average consumer gives to a trade mark may vary according to the particular class of goods involved. Where goods are everyday consumer goods such as dishwashing tablets, the level of attention given to the shape of the goods was not likely to be high. The test for everyday goods is therefore more difficult to fulfil as they have to make a bigger impact, so the level of distinctiveness in effect needs to be higher (Procter & Gamble, CFI, and Benson Holding Ltd, First Board of Appeal).
When applying the test, the average consumer must be able to distinguish the goods concerned from those of other traders, "without conducting an analytical or comparative examination or paying particular attention" (Henckel C-218/01).
The average consumer will normally perceive a mark as a whole and does not analyse its various details, so that the distinctive character must be recognisable when the overall impression of the mark is considered (Mag Instrument Inc C-136/02P).
Acquiring distinctiveness by use
Even if a mark is not inherently distinctive, if it has been used in such a way as to become distinctive, then it may proceed to registration. This applies to shape marks (Philips v Remington C-299/99) but is a high hurdle. One reason for this is that any use of a shape prior to application is almost certainly also going to involve use of a word or figurative mark acting as an indicator of origin. However, to obtain the shape mark, the applicant must show that the shape itself was recognised as distinctiveness as a trade mark. The ECJ has concluded that "not every use of the mark ... amounts necessarily to use as a mark" (emphasis added)(Storck 1 C-24/05P).
The additional shape mark exclusions
There are three additional shape mark exclusions that apply over and above the prohibitions on registration applicable to other marks. The policy reasons for including these additional exclusions are to prevent shape mark owners from monopolising basic shapes that should be available to other undertakings, and which would be better protected by alternative IP rights such as design rights or patents. These additional shape mark exclusions are absolute when they apply and cannot be overcome by use.
Successful shape registrations |
The Coca-Cola bottle Stand mixers (Kitchenaid Whirpool – UK High Court) A bottle with a spiral shaped neck (Weldbrau GmbH) A hexagonal-shaped cigarette packet (Philip Morris Products) Igloo-shaped pet shelters (Doskocil Manufacturing Company) |
Shape marks cannot be registered where the sign concerned consists exclusively of:
A shape resulting from the nature of the goods themselves. The motivation for this exclusion is that where a product is naturally a particular shape, that shape should be available to all. Although not yet definitive, it has been suggested that this exclusion may be overcome where other shapes are possible for the goods in question (Procter & Gamble Case T-122/99).
A shape of the goods necessary to obtain a technical result. The ECJ has held that this exclusion will apply even where there was another way of obtaining the same technical result. In the Philips case, the essential features of the shape concerned – the Philips three-headed shaver – were found to be only functional, and therefore the shape mark could not survive and was revoked by the UK court, despite the fact that the result could have been achieved by other means.
In the recent Lego case (Lego T-270/06). Lego advanced several carefully crafted arguments about the language of the exception in an attempt to distinguish the case from Philips. However, the CFI did not accept these and found that any additional non-essential characteristics would not save a shape mark where all the essential characteristics of the shape performed a technical function. Although Lego tried to persuade the court that consideration of this exclusion could be facilitated by concepts more usually found in design and patent law, the CFI was not convinced. The court did however acknowledge that the application of this exclusion was appropriate for expert evidence, rather than consideration from the point of view of the consumer.
A shape that gives substantial value to the goods. There is a danger that where a shape is distinctive, it may almost be too distinctive and so vulnerable to this exclusion. In Bang & Olufsen's application to register the shape of a loudspeaker, the CFI found that although the loudspeaker did indeed have distinctive character sufficient to warrant a registration, it was excluded from registration as the distinctive shape gave the loudspeaker substantial value. This exclusion applies when a shape has the potential to determine to a large extent the consumer's behaviour to buy the product.
There is therefore something of a squeeze that needs to be avoided – the very distinctiveness that will attract customers may in fact fall foul of the substantial value exclusion, particularly in the area of luxury or design-driven goods, and particularly where the shape mark was not inherently indistinct.
In Benetton Group v G-Star, C-371/06, the court looked at the interrelation between this exclusion and the ability to acquire distinctiveness permitted by Article 3(3) of the Directive where it was not inherent in the shape of the goods. G Star had registered shape marks in class 25 depicting specific stitching on jeans and had engaged in a wide advertising campaign to educate consumers that the stitching was indicative of G Star's product. G Star sued Benetton for infringement and was met with a counterclaim for invalidity. Benetton argued that G Star's mark was invalid as the shape added substantial value to the goods. In answering questions referred by the Supreme Court of the Netherlands, the ECJ found that where, prior to an application, a product acquired attractiveness though an advertising campaign which focused on the specific characteristics of the product in question, it may not be registered due to the substantial value exclusion. This is clearly not helpful for those whose products need to acquire distinctiveness and will require some thought to be given to any advertising campaign designed to raise the consumer's awareness of the product.
Unsuccessful shape registrations |
Rectangular tablets for dishwashing tablets (Procter & Gamble Case T-117/00-121/00 and Henckel Case T-30/00)) Rectangular blocks with studs for toys (Lego) Three-headed shavers (Philips v Remington) Shaped cheese (Bongrain's SA's application – UK Court of Appeal) Torches (Mag Instruments Case T-88/00) A shaped sweet (August Storck Case C-24/05) Stitching pattern on jeans (G-Star C-371/06)) A bar of soap with concave sides (Procter & Gamble Case C-107/03) Loudspeakers (Bang & Olufsen Case T-460/05) |
Enforcement of shape marks
There are two ways in which a registered shape mark can be used against competitors to protect the registration. The first is a challenge to any subsequent application made by a competitor for a similar mark based on the relative grounds for refusal of a registration. The second is an action for infringement under Article 9 of the Directive.
There is comparatively less jurisprudence about how shape marks will fare in these types of application, with a challenge often resulting in invalidity of the shape mark. However, where the shape mark survives judicial scrutiny, the evidence is that the protection conferred by a shape mark may be narrow:
In the Bottle/Snip case, T-24/08, the 4th Board of Appeal rejected a challenge to an application based on similarity to a prior registered mark where both marks were bottles with twists or helical turns in the neck. The Board concluded that there was sufficient distinction between the two shapes, even though their essential characteristics could be described in the same way.
The UK High Court has recently found that even where there was enough similarity between two products to remind consumers of the other product, this was different to the average consumer believing that one was the other either when seeing them together or seeing them separately and was not sufficient for infringement (Whirlpool v Kenwood 2008). This case related to food mixers at the premium end of the market. Details of the design were a feature of which the average consumer of these products would be aware, and so when it came to assessing similarity, this was a pertinent factor that prevented a finding of infringement.
Alternatives to trade mark protection
Given the difficulties outlined above with navigating a way through the requirements to obtain a shape mark registration, IP owners are also likely to consider the alternative rights that offer protection. It is possible for there to be overlap such that an article for which it is possible to obtain a shape trade mark may also be protectable by other IP rights:
Copyright will inevitably vest somewhere in the design of products or packaging. However, the difficulty with relying upon copyright to protect intellectual property against infringers is, of course, the need to prove copy as required by law. It is often the case that many lookalikes are in fact not sufficiently close to the original product/packaging to amount to copyright infringement. However, copyright infringement can be run alongside a shape mark infringement case, for example, in the G Star case referred to above.
Patent rights may also be relevant to a product, or the means of manufacturing the product. If so, it is likely that the owner would opt for patent protection if possible. However, when the patent expires, trade mark protection could provide a back up. In the Lego case, the court noted that the Lego patent had expired in relation to the bricks. There was therefore an issue of policy as to whether such further protection should be available.
Design protection is the area that perhaps overlaps most with shape marks. The guidance in the UK IPO states specifically that trade marks "may protect particular shapes, but not design concepts". This prevents applications for trade marks where the graphical representation is merely illustrative, but not does exclude overlap. A European registered design has the benefit of not requiring the registrant to show distinctiveness such that the design is linked back to the owner; what does need to be shown however is that the design is new and has individual character.
Looking at the Lego decision, it would appear that the courts do at least have policy in mind when considering whether trade mark rights for shapes are appropriate as to whether other IP rights have been or should have been granted or used. It is likely as the case law continues to develop that this area will be subject to further scrutiny.
A positive future for shape marks
There is now a substantial body of guidance from the European courts on how to approach the issue of whether a shape can be registered as a trade mark. However, difficulties remain in the application of that guidance to specific shapes, especially where there is no inherent distinctiveness in the shape. There is less indication of how strong registrations of shape marks will be when seeking to enforce them against competitors, but the indications are that the effect of the registrations may not be as wide as trade mark owners would like. That said, and compared with alternative means of protection, the shape trade mark should remain a positive consideration for those looking to protect the shape of their products.
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Mark Shillito |
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Heather Newton |
© Herbert Smith LLP 2009. Mark Shillito is a partner and Heather Newton is a senior associate in the firm's London office
On managingip.com |
Court limits scope of protection of CTMs (June 2008) Three challenges for the ECJ (May 2008) How to win in Europe (June 2007) Better by design (April 2007) Philips defeated over shape mark (February 2006) |