Shape trade marks provide excellent protection for the shape of core products – if you can get one…
The recent decision in the Kit Kat case throws doubt over how easy it is to register a 3D mark. A shape mark can provide a perpetual monopoly over a 3D device. This offers a huge competition advantage but can be very limiting for that very competition (and limit you if you are on the wrong side of a shape mark in the future). What if someone needs to make their product in a similar shape for the product to work? Design law in Europe offers up to 25 years protection if you register your design so why should this monopoly last indefinitely?
The European compromise is that you can register a shape as a trade mark but you have to jump through a lot of hoops to get there. For example, the shape must be distinctive (in almost all instances this means that evidence of acquired distinctiveness is necessary), the shape cannot have a technical function and must not give substantial value. Almost every hoop in the ring was jumped through by Nestlé in the recent Kit Kat case over the four fingered chocolate bar – as readers may be aware, they recently fell short of the final hoop on Appeal in Société des Produits Nestlé S.A. v Cadbury UK Ltd (“Kit Kat” EWHC Civ 358).
Figure 1: Nestlé were unsuccessful in its attempt to register the four-fingered Kit Kat chocolate bar.
So, what is required in order to successfully register a shape mark?
Step One: How does it look?
The shape must be capable of “graphical representation” (Article 2 Trade Marks Directive 2008/95/EC (the TM Directive”) and section 2 Trade Marks Act 1994 (“TMA”)). In other words, the shape must be clear, precise, self-contained, easily accessible, intelligible, durable and objective (the Sieckmann (C-273/00) criteria).
The shape cannot be a simple idea but must be fixed to a particular 3D form. This means that you cannot register the concept of a product (e.g. a transparent surface) or an infinite number of possible variations (e.g. numbered tiles). For example:
- Dyson’s registration for the shape of the transparent collection chamber in its vacuum cleaner failed because the chamber was a mere property of the vacuum cleaner. Dyson had not tried to register different shapes of the chambers but only the concept of the chamber itself (Dyson Ltd v Registrar of Trade Marks C-321/03).
- 3D ivory coloured scrabble tiles which included a different letter and a numeral of 1-10 did not meet the Sieckmann criteria (JW Spear & Sons Ltd v Zynga Inc  EWCA Civ 1175).
Figure 2: Dyson was unsuccessful in registering the shape of the transparent collection chamber in two models of the vacuum cleaner.
Step Two: Is it distinctive?
Like all trade marks the shape must have distinctive character (Article 3(1)b TM Directive / section 3 1(b) TMA) but the test for distinctive character is much stricter for shapes.
It is unusual for examination officers to find that a shape is inherently distinctive. Usually the applicant needs to prove acquired distinctiveness. A shape is more likely to succeed if it is (i) highly unusual for the goods in question; or (ii) the mark consists of more than just the shape (e.g. it includes a decorative feature of logo). However, adding features presents the risk that (i) third parties who copy the shape only will not be infringing the mark; or (ii) the additional features may be caught by the “substantial value” exclusion (see below) which prevents the mark from being registered.
Following Kit Kat in order to establish acquired distinctiveness:
- The shape alone must exclusively designate trade origin to the average consumer without additional signs or marks. This is more than mere association with a particular business.
- You must prove use in every EU Member State. High recognition in several Member States cannot offset low recognition in other Member States.
- The shape does not need to be visible at point of sale. The mark can still acquire distinctiveness through advertising and/or consumer use (e.g. after the packaging is opened).
Businesses seeking to prove acquired distinctiveness should focus on gathering evidence that the shape is perceived as a badge of origin in its own right. This can be through, for example (i) the scale of use; and (ii) levels of consumer awareness (e.g. through advertising).
Step Three: Exclusions
Even if you get past steps 1 and 2, the shape may still be refused registration if it:
- results exclusively from the nature of the goods themselves;
- gives a technical result; or
- adds substantial value to the goods.
These exclusions are independent of the others; if one is not satisfied the whole mark fails. All of the product’s essential features must be caught by the exclusion for it to apply so the addition of a material feature which is not caught by the exclusions may help.
The exclusions reflect public policy arguments against allowing a business to monopolise a shape for an indefinite period of time where that shape would properly have been protected under another (time-limited) intellectual property right such as patents or design protections.
Nature of goods
An applicant cannot monopolise the shape of goods themselves.
This exclusion will catch a shape mark which: (i) is solely dictated by the shape of the product; and (ii) includes one or more essential features which are generic to products in the same category (Hauck GmbH & Co KG v Stokke A/S C-205/13).
A shape mark which is caught by this exclusion is unlikely to have passed the distinctive character threshold.
A shape mark cannot be used by an applicant to obtain a monopoly over a technical result.
A technical result should be protected by a patent (if available) which lasts for only 20 years. The Lego brick was denied registration on this basis. The “cavities” on the bottom of the Lego brick were designed to fit together with the “bosses” on the top. These were the essential elements of the mark which were necessary for the performance of a technical function (Lego Juris A/S v Mega Brands, Inc C-48/09).
The technical function exclusion applies to the way the goods function and not the manner of their manufacture (Kit Kat). Non-visible parts of the shape mark can also be considered in an assessment of technical function (Simba Toys GmbH v EUIPO C-30/15P).
The depiction of technical features of a shape mark on the application is important. Lego was successful in registering a shape mark for its Lego figures (Best-Lock (Europe) Ltd v OHIM, Lego Juris A/S (T-395/14; YT-396/14)). This was because the representation of elements such as the holes under the feet and on the back of the legs of the Lego figures did not give any indication as to technical function of these elements.
Figure 3: Lego’s shape mark for the lego figure (Application No 50450).
Decorative and non-functional elements in the shape mark can help overcome the technical function exclusion (Hauck (C-205/13)). However, they must be carefully considered to avoid falling into the “substantial value” trap or to present an opportunity for third parties to copy the shape alone.
A shape mark cannot be used to extend a design or patent after it has entered the public domain. This is the key purpose behind the substantial value exclusion (Hauck (C-205/13)).
In the recent London taxi case, the registration of a London taxi design was invalidated on the basis that it was for “iconic, design classics which added substantial value to the vehicles” (The London Taxi Corporation Ltd v Frazer-Nash Research Ltd  EWHC 52). The judge noted that the shape mark could have been protected by a registered design.
Successfully registering a shape mark is a challenge. In order to put the best case forward:
- Keep track of all evidence of use in all countries where the product is sold from the date the new product launches – be aware of the need to prove acquired distinctiveness in each Member State. Evidence should include number of sales, the percentage of the market (if possible) social media reaction, other consumer feedback, all media engagements and related publicity.
- Adopt and divide a conquer approach by registering national marks in key territories (e.g. UK, France, Germany) if the shape does not have sufficient recognition throughout the EU.
- Educate the public via promotions and advertising so that they are encouraged to link the shape of the product with the brand.
- Include a material non-functional element such as a decorative feature. Although this runs the risk of only offering protection for full counterfeits and not third parties who copy the shape it is better than nothing and can be built upon in the future as you gather more evidence of acquired distinctiveness.
- Finally, for products less than a year old consider doubling up on protection by registering a design.
Despite the apparent hurdles to registration, many shape marks have proceeded to registration. These include the packaging of the Toblerone chocolate bar, the Manolo Blahnik shoe and the Longchamp Le Pilage bag.
Figure 4: Kraft Foods Schweiz Holdings GmbH obtained shape marks for the distinctive triangular and hexagonal packaging of the Toblerone chocolate bar (Application Nos 00505461 and 00326123 respectively).
Figure 5: Manolo Blahnik successfully registered both a shoe and shoe buckle (Application Nos 014460455 and 014460448 respectively).
Figure 6: the LONGCHAMPS Le Pilage bag obtained its shape mark as a result of the word LONGCHAMPS being included in the line drawing.