There are some specific grounds of objection applying only to shape marks. A mark will be excluded from trademark registration if it consists exclusively of a shape which results from the nature of the goods themselves for which trademark protection is sought, if the shape is necessary to obtain a technical result or if the shape gives substantial value to the goods. Protection for product shapes is provided under different situations.
Shapes necessary to obtain a technical result
If there is technical function perform by essential characteristics then shapes are excluded from registration. Only where the shape has a material non-functional element (e.g. important decorative or imaginative elements) could registration as a trademark 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 trademark 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 favorable 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 trademark protection from designs (and copyright) law.
This is true even where those elements also perform nonaesthetic functions. Unfortunately, the factors are 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 for product shapes due to lack of novelty or individual character could be registered as trademarks.
Under the current proposal for European trademark 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 color, 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 color). The Court considered that if a color 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.
The conclusion of Protection for product shapes
Seeking protection for product shapes through registered trademarks 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.
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 trademark registration if at least one of the grounds of objection does not apply to all three essential elements. Copyright Laws regarding Protection for product shapes are provided.
Related Topic: Trademark issues related to Internet Domain Names