Whilst design law might seem the obvious starting point for protecting product shapes, in the right circumstances trade mark protection will also be available. This is a big draw for brand owners due to the potential unlimited duration of trade marks compared with designs. This article takes stock of recent shape mark decisions from the EU Court of Justice (CJEU), before looking at the legislative reforms on the horizon.
In contrast to other types of mark, there are three specific grounds of objection applying (currently) only to shape marks. A mark will be excluded from trade mark registration if it consists exclusively of a shape which results from the nature of the goods themselves for which trade mark protection is sought, if the shape is necessary to obtain a technical result or if the shape gives substantial value to the goods. Recent CJEU cases have considered each of these grounds, in some cases generating significant commentary and media interest.
Shapes resulting from the nature of the goods
Shapes resulting from the nature of the goods for which protection is sought will be refused registration. Previously there was some debate about whether the ground only applied when no alternative shapes are available for the products covered by the trade mark application. This was resolved by the CJEU in the Hauck v Stokke case (C-205/13), in which the protection of the famous Tripp-Trapp kid’s chair was at issue. The Court confirmed that the ground of objection can apply even if the shape is not indispensable to the function of the goods, and so would bite on shapes having essential characteristics which are inherent to the generic function of products of the same category. This has raised the threshold for overcoming this ground of objection.
Shapes necessary to obtain a technical result
Shapes are also excluded from registration if their essential characteristics perform a technical function. Only where the shape has a material non-functional element (e.g. important decorative or imaginative elements) could registration as a trade mark be accepted. In addition, the existence of alternative shapes performing the same function is not enough to lift the ban on protection. For that reason, the registration of “Lego” bricks was not permitted (Case C-48/09). In contrast, Lego’s trade mark registrations for its toy figures were held to be valid by the General Court.
The result of that shape was to confer human traits on the toy figures, and was not ‘technical’ (Case T-395/14). In the recent KitKat case (Case C-215/14) regarding the shape of chocolate bars, the CJEU stated that only the manner in which the goods at issue function is decisive, not the manner of manufacture. This is favourable to brand owners.
Shapes giving value
Shapes conferring substantial value on the product are also excluded from protection. One of the policy aims behind this is to separate trade mark protection from designs (and copyright) law. In the Stokke case referred to above, the CJEU pointed out that not only product shapes having artistic or ornamental value are excluded from trade mark protection, but also such shapes which have a significant aesthetic element.
This is true even where those elements also perform nonaesthetic functions. Unfortunately, the factors given by the CJEU for assessing this (e.g. category of goods concerned, artistic value, dissimilarities with other shapes, substantial price difference) are sometimes only of a temporary nature and therefore difficult to apply. Taken to extremes, this could lead to a rather odd result where only shapes which are ineligible for design law protection due to lack of novelty or individual character could be registered as trade marks.
The three grounds of refusal discussed above threaten to become even more relevant in future. This is because under the current proposal for European trade mark legislative reform, signs will be refused if they consist exclusively of “another characteristic” (not just the shape) resulting from the nature of the goods/ necessary to obtain a technical result/ giving substantial value to the goods themselves. This would extend the grounds to non-traditional marks such as colour, sounds and/or smell.
In a Dutch case concerning the infringement and validity of the famous red sole of “Louboutin” shoes, the Dutch Court is in the process of referring a question to the CJEU about the refusal of shapes which give substantial value to the goods. The draft question is whether the concept of shape in this context is limited to the 3D characteristics of the product (such as contours, dimensions and volume) or whether it also includes non 3D properties of the product (such as colour). The Court considered that if colour is not covered by this ground for refusal, the TM owner would be able to prevent competitors using characteristics on their products which are sought and valued by the public, such as the red sole of a shoe. The Court also considered that such an interpretation could prevent a competitor marketing reflective safety clothing or soft drinks in reflective, and thus insulating, packaging where this constituted a technical solution.
Seeking to protect product shapes through registered trade marks can certainly be challenging. On the one hand, the shape should differ sufficiently from the norms of the sector in order to be distinctive, and have at least one major non-functional element to avoid a ‘technical result’ objection. On the other hand, the product shape should not include a significant aesthetic element giving the goods substantial value. Brand owners need to consider carefully how to strike the right balance.
However, the KitKat case may strengthen the position of shape mark owners. The CJEU confirmed that the registration of a shape can only be refused where at least one of the grounds of objection discussed above is fully applicable to the shape in issue. This means that a shape consisting of three essential features cannot be denied registration if at least one of the grounds of objection does not apply to all three essential elements.
We will have to see what the future holds for shape mark proprietors!
This article is part of the Bird & Bird's fifth edition of BrandWrites
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