Shape trade marks have been a part of the South African trade mark landscape since the adoption of the South African Trade Marks Act 1994. The fundamental tenet of the South African trade mark regime is that a trade mark must be capable of distinguishing the goods of one person from those of another. In so far a shape is capable of fulfilling this function it will be registrable as a trade mark. The Act does curtail the registrability of shapes that consist exclusively of the shape of goods where that shape is necessary to obtain a specific technical result, or results from the nature of the goods themselves.
The recent European decision in Lego Juris v OHIM – Mega Brands (Lego brick) (T-270/06) provides further registrability guidlines for shape trade marks. South African courts are influenced by European court decisions. The case involved Lego's application to have its basic lego block, as depicted, registered as a shape trade mark. The application was rejected by OHIM and this decision was appealed.
Lego's main contentions in support of their application were that the relevant section of EU law prohibits the registration of a shape that consists exclusively of features that are necessary to achieve a particular technical result. Lego contended that their shape trade mark did not consist exclusively of functional features that were necessary to achieve a technical result. The South African Act has identical registrabilty prohibitions.
In rejecting Lego's arguments the Court relied on the Koninklijke Philips Electronics NO v Remington Consumer Products Ltd (2003 RPC 2 14). The Court stated that only the essential features of the shape need to have an exclusively functional nature. If the essential features of the shape are functional then the shape cannot be saved from the prohibition in EU law, or equally the prohibition in South African law. The Court held that consumer perception was not relevant to the determination of the functionality of the shape. Survey evidence showing that consumers associated the shape of the block with Lego was not sufficient to overcome the inherently functional nature of the block.This means that even in the event of a functional shape becoming capable of fulfilling a real trade mark function it will remain registrable due to its functional features.
Lego also argued that the shape was not necessary to obtain a technical result as the technical result could be achieved by employing other shapes. The Court found that the requirement was that the essential features resulted in the technical result sought. The existence of other shapes that could achieve the result was irrelevant. A shape that consists exclusively of features that result in a specific technical result is inherently unregistrable.
The future appears bleak for people seeking to protect patent and design rights by way of shape trade marks. Owners of patents and designs must take heed that once these limited rights have expired they will be entering an open competitive market and that it is pointless to attempt to entrench monopolies by trying to gain trade mark protection for functional shapes. Owners of existing registered shape trade marks should be aware that many of these trade marks might not survive attacks based on the principles embodied in the Lego and Philips cases.
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Gerard du Toit and Carl van Rooyen |
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