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The Shape of Things to Come

The three-dimensional shapes of products and/or their packaging have been registrable as trade marks ever since the introduction of the Trade Marks Act 1994 ("the TMA") which itself implemented a European Directive intended to harmonise trade mark law throughout the European Union. The introduction of the TMA demonstrated a widening of what can constitute a trade mark and a community-wide acceptance that the shape of products is a growing influence on brand differentiation and identification. The most notable example of brand identity expressed via a product shape is arguably the Coca-Cola bottle, which has been used as the packaging for Coca-Cola's main product for almost a century. The value which Coca-Cola attaches to this shape as a signifier of its brand is evidenced by the shape's use on other packaging such as cans, merchandise, promotions. This is also apparent by the haste with which Coca-Cola sought to protect the shape of the bottle via its registration as a trade mark as soon as the law would allow.
Whilst Coca-Cola's application to have a three-dimensional shape registered as a trade mark was successful many applicants are not, sparking much debate in the intervening years since the TMA was introduced as to what exactly may be registered as a trade mark.
What is a trade mark?
The TMA defines a trade mark as "…any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings". As such, a trade mark may consist of designs, letters, numerals or the shape of goods or their packaging.
A trade mark may be refused registration for a number of reasons. The most relevant to shape mark applications are where the mark is:

1. devoid of distinctive character and is therefore unable to be used to distinguish between the goods or services of one undertaking and another; or

2. consists exclusively of a shape which results from the nature of the goods themselves, a shape which is necessary to obtain a technical result or a shape which gives substantial value to the goods.

What protection does a trade mark offer?

A registered trade mark in itself may act as a deterrent to those that would otherwise seek to unfairly take advantage of your brand.
Should a registered trade mark be infringed, the proprietor may seek an injunction, damages, obliteration of the offending mark from the product in question, destruction of the products or delivery up of the products to the trade mark proprietor for destruction. Infringement can generally be established without the proprietor having to demonstrate any goodwill in the mark.

Proving distinctiveness
For a trade mark application to be successful and not to be refused for any of the reasons mentioned above, and indeed for the mark itself to be a successful brand, it requires distinctiveness. In relation to the registration of three-dimensional shapes, recent case law has offered invaluable guidance on how to assess distinctiveness of three-dimensional marks and in so doing has clearly shown that such distinctiveness if often extremely difficult to prove.
In the case of Philips v Remington, Philips was the proprietor of a UK registered trade mark consisting of a two-dimensional illustration of the top of their familiar 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, mainly due to the fact that the shape of the goods was necessary to obtain a technical result. Having referred the matter to the ECJ for assistance in interpreting the law the ECJ declared that the shape of a product is unregistrable as a trade mark if the essential features of that shape are attributable only to the technical result. The UK courts therefore deemed the registered mark to be invalid.
In 1997 the car manufacturer Daimler Chrysler applied to register the shape of its "Jeep" vehicle grille as Community trade mark to be applied to land vehicles. OHIM initially refused the application based on a lack of distinctiveness in the mark, most land vehicles having grilles of some description.
Daimler Chrysler appealed and the court ruled that in assessing the distinctiveness of a mark regard should be given to both the goods or services to which the mark is to be applied and the target consumer group for those goods. The court held that grilles have become an essential part of the overall look of land vehicles and a means by which the target consumer may differentiate between existing models on the market.
It is interesting to note that shape of the mark in this instance was deemed to have both a distinguishing purpose (as an identifier) and also a technical function in that it served to ventilate the vehicle's engine. The court was clear that the mere presence of a functional purpose should not have a bearing on the question of distinctiveness of a mark, especially if the distinguishing role outweighed the functional role. The "Jeep" grille was judged to be a suitably distinctive design that was not commonplace as at the date of the application, which made it capable of registration as a three-dimensional trade mark.
More recently, BIC SA sought to register the shape of its cigarette lighter as a Community trade mark. The application was refused on the basis that the shape was devoid of distinctive character. BIC appealed but had its appeal dismissed on the basis that the shape was little different to the shape for a lighter that would naturally come to mind.
An application by Deutsche Sisi-Werke GmbH ("DSW") to register the shapes of various stand up drinks pouches as Community trade marks has also been rejected on the basis that the shapes were devoid of all distinctiveness. DSW appealed but its appeal was dismissed. DSW then applied to the court for redress, but the court upheld the OHIM Board of Appeal decision. DSW as a last resort appealed to the European Court of Justice (“the ECJ”) on the basis that the law was being misapplied, but again its appeal was dismissed.
In reaching its decision the ECJ stated that it was necessary to take into account the perception of the public in assessing the physical attributes of any three-dimensional mark. In DSW's case it was necessary to consider other types of existing packaging available to determine whether a consumer would, without paying particular attention, distinguish DSW's goods from those of another. As the packaging, the shape of which DSW was seeking to register as a Community trade mark, was of a form already in use by others and generally available to the public it was deemed not to be sufficiently distinctive and was therefore unregistrable.

Alternatives to trade marks
From the above examples it can be seen that the registration of a three-dimensional shape as a trade mark can be a difficult and complex business, not to mention a costly one if you become embroiled in the appeals process. A more appropriate, and indeed practical, solution for protecting three-dimensional products is to utilise design rights.
A registered design right (covering either the UK or the whole of the European Community) will protect the appearance of the whole or part of a product resulting from features of, in particular, lines, contours, colours, shape, texture, materials or ornamentation. For the purposes of a registered design right a "product" can include packaging, graphical symbols, typographical typefaces, visible constituent parts and the overall get up of a product.
In order to successfully register a design right in a three-dimensional product you must be able to show originality in the product. As such, the product must be "new" and have individual character in that no identical design, or design that differs only in immaterial details, has previously been made available to the public. It is also important to note that in order for a design right to be registrable the product itself must not have been made previously available to the public. This includes by means of publication, exhibition or trade use (e.g. for sample purposes) although there is a 12 month period of grace attached to this stipulation.
In a similar way to trade mark registrations, a product is ineligible for design right registration if its features are solely dictated by a technical function or if its design is governed by its requirement to interface with another product.
It is not always necessary to register a design in order for a product to enjoy some degree of protection under current design right laws. UK unregistered design rights protect any aspect of shape or configuration of the whole or part of an article may be protected by unregistered design right provided that the design is recorded in a document or an article has been made to the design.
As with a registered design right, in order for a product to be protected by UK unregistered design rights it must be shown to be original. This means that a product's design must be the result of independent effort (i.e. not copied) and not commonplace in the design field in question.
UK unregistered design rights protect the shape or configuration of a product. They come into existence automatically without the need for registration. They will not cover those aspects of a product that are designed to interface with other products such that either one of them may perform its function. They will also not cover aspects of a product that are governed by a need to match the appearance of another article of which it is intended to form an integral part or surface decoration.
In addition to UK unregistered design rights, a product or its packaging may also be protected by Community unregistered design right. Like UK unregistered design rights, Community unregistered design rights come into existence automatically. The test for whether a design qualifies for this protection is the same as the test in respect of UK and Community registered designs.

The remedies available to the proprietor of either a registered or unregistered design right are largely the same as those available for infringement of a trade mark. There are however some differences: whilst a trade mark can continue to offer such protection indefinitely, a UK or Community registered design right will last for a maximum duration of 25 years. A UK unregistered design right only exists for a maximum of 10 years from the date a product was first marketed and is subject to anyone being able to apply for a licence of right to use the design within the last five years of the 10 year term. Community unregistered design right lasts for just three years from the date the design is made available to the public in the EC.
Confusingly, copyright will in some circumstances also protect three-dimensional designs where they are considered to constitute a work of artistic craftsmanship. Copyright does not require registration and provides protection for the duration of the author's life plus 70 years.

What should I do to protect my products?
As you can see, the protection of the shape of products and packaging is fairly complex. Accordingly, to ensure that your rights are properly protected you should seek specialist intellectual property legal advice throughout the design process.

Further Information
Shelley Beaumont is a lawyer specialising in intellectual property with law firm Haliwells. She can be contacted at the firm’s Manchester office on 0161 835 3003.

September/October 2010
issue 61
available now