3D trade marks – The key trends, the success stories, and the future

Featured in Issue 73 of the World Trade Mark Review 

Need advice for your 3D trade marks? Get in touch 

Three dimensional (3D) trade marks have featured prominently in the news in recent years due to the coverage given to some of the world’s biggest companies, which have achieved great successes and failures in relation to registration in equal measure.

Coca Cola, Mondelez (Toblerone), Hard Rock Café, and Chanel, to name a few, have obtained protection for their product’s shape or packaging as a result of their unique and distinctive characteristics, with their successful applications undoubtedly cementing their place in the commercial marketplace and aiding their ongoing success.

Whereas Nestle (Kit Kat), Jaguar Land Rover, and Rubik’s Brand (Rubik’s Cube), failed in their bid to claim 3D trade mark protection, despite seemingly having the necessary recognition amongst millions of consumers.

Gareth Jenkins and Don Pennant at leading intellectual property firm Wynne Jones IP, discuss why an investment in a 3D trade marks can provide unparalleled commercial benefits and industry success. However, caution is advised, and any potential owner should thoroughly research previous cases before making any application, so that a clear and realistic expectation of the scope of rights obtained can be considered.

Mr Pennant said: “In recent years we have seen a number of high-profile cases of well-known brand owners failing in securing and / or enforcing 3D trade mark rights, when many would agree that these brand owners were in fact seemingly deserving of them.

“This should not serve to discourage brand owners who feel they have a legitimate case with merit in seeking 3D trade mark protection.”

What are the differences in these cases and what criteria are in fact necessary to achieve the allusive 3D trade mark registration? To answer these important questions we must first ask what a 3D trade mark is.

What is a 3D trade mark?

A 3D trade mark is one example of the many types of trade marks that may be registered.  A 3D trade mark is the same as a normal trade mark in that it needs to fulfil the standard criteria that all trade marks should for registration. It must not be descriptive and it needs to be able to distinguish goods and/or services of one undertaking from those of others.

What makes the 3D trade mark desirable is that if registered, it should provide the owner with a right to the exclusive use of the shape of the product itself or for the packaging thereof, in relation to a range of goods and/or services, providing the owner with a clear commercial advantage in the manufacture and sale of those products and / or packaging.

There is some resonance with rights protected, through registering a design or by design right, but these should not be confused, not least because all forms of designs rights are time limited. But a trade mark registration gives a monopoly in perpetuity so long as it is renewed and used.

What are the hurdles to achieving 3D trade mark protection?

As with any other form of trade mark, a 3D trade mark must not be any of the following:

1. The shape or other characteristic, which results from the nature of the goods themselves.
2. The shape, or another characteristic, of goods which is necessary to obtain a technical result.
3. The shape, or another characteristic, which gives substantial value to the goods.

It is worth noting that only one of the above grounds of refusal is required to prevent registration.  With regard to 3D trade marks the courts have frequently held that the purchasing public is not used to distinguishing between competing products on the basis of shape alone. The closer the shape resembles the natural shape used for such products, the less likely it is to be considered as distinctive enough for registration as a trademark. This is often the real first hurdle.

The shape which results from the nature of the goods themselves.

This first criterion consists of marks where the shape of the goods is inherent to the generic function of them. The shape of a football is an example of the type of shape that will be refused protection.  There are many common shapes which no one undertaking should be allowed to obtain a monopoly right in. The more uncommon or fanciful the shape the more likely the rights will be granted.

Stokke A/S was granted a 3D trade mark registration for its Tripp Trapp chair.  When it sued Hauck for infringement a counterclaim was filed for invalidity on the basis that the chair shape was determined by the nature of the product itself namely a ‘safe comfortable and reliable children’s chair’.  It was found that this provision applies to shapes containing essential characteristics inherent to the function of the goods i.e. characteristics purchasers would look for in competitor’s products.

The shape of goods which is necessary to obtain a technical result.

This second criterion has been the pitfall for many well known branded products such as Lego. The shape of the Lego brick was refused on the basis that the mark applied for was a shape with essential characteristics which performed the technical function of the product i.e. the most important element of the Lego brick allows it to be attached to another.

The toy brand, which is world renowned for creating its mini red building bricks, originally saw the product registered with a European Union Trade Mark in 1999. However, just two days after the registration was obtained its competitor Mega Brands contested the trade mark registration on the basis that the 3D product related directly to its ability to perform a technical function.

Following the challenge, a lengthy legal process ensued, which was eventually resolved in 2010, when the registration was ruled invalid as its shape allowed, and was necessary, for the product to achieve a technical result.

More recently, the ‘famous’ four finger chocolate bar, in the Kit Kat case, was refused on both the first and second criteria. The court found that the basic rectangular bar shape resulted exclusively from the nature of the goods. The position and depth of the grooves running length ways as well as the number of grooves making the width were simply determined by the technical effect of needing to break the fingers.

The shape which gives substantial value to the goods.

The third criterion involves marks that consist of a shape which gives substantial value to the goods. This is a trickier criterion to determine and is subject to many cases. It relates exclusively to the intrinsic value of the shape and does not take any account of the attractiveness of the goods flowing from the reputation of the trade mark or its proprietor.

In the Hauke v Stokke ( Tripp Trapp chair case) the Court of Justice explicitly stated that this ground of refusal is not limited to marks which have a purely artistic or decorative value.  This can overlap with the second criterion if part of the product confers substantial value through a technical function, as discussed in the Bang & Olufsen case.

In the Bang & Olufsen case an application was filed for the ‘beautiful looking’ speaker, however the court decided that the sign consisted exclusively of the shape which gives substantial value to the goods. Consequently, it rejected the application for registration.

There is an argument to say that if such an innovative design is created, why should it not be able to be subject to exclusive rights, such as a trade mark? Well the answer may lie in the fact that the speaker design may have been more appropriately protected through design rights, whether registered or unregistered. Are IP rights mutually exclusive? This issue arose in the London Black cab case in 2016.

The London cab shape was found to consist exclusively of the shape which gives substantial value to the goods and was rejected. It is certainly arguable that the value actually came through use and therefore flowed from its reputation. The shape was, however, already registered as a design. The high court found this to be relevant. If a 3D trade mark could be protected by other IP rights (registered design in this case) this may contribute to a finding of invalidly, if it had been applied for and registered as a trade mark per se.

This case highlights the court’s attitude to preventing trade marks from being used to indefinitely extend the time-limited protection of other IP rights.

The shape of this article belongs to the genus, which should be protected and protectable by design right, which is granted for a limited time only to spur innovation in designs. Trademarks are there, in contrast, to protect distinctive signs and repute. The availability of trademark protection on top of or instead of design protection may undermine and artificially extend the time-limited character of design rights.

Naked 3D shapes seem to be viewed with a greater degree of suspicion than those which are filed along with additional features (such as graphical or word elements or even position trade marks) to the 3D shape or packaging. This reluctance on the part of the trademark offices and the courts to accept registration must stem from the fear that a trademark monopoly by way of 3D shapes could ultimately stifle legitimate competition.

This current position for this criterion is being considered in the Louboutin case which concerns an invalidation action filed against a Benelux trade mark registration for the signature red sole of Christian Louboutin’s shoes. The Court of Justice has been asked whether a shape is limited to three dimensional characteristics including its contours and measurements, or, on the contrary, does it also include non-three dimensional properties such as colour? The Court of Justice is yet to issue its decision, but an opinion has been provided by the Advocate General in which it was stated that “[t]he mark should therefore be equated with one consisting of the shape of the goods and seeking protection for a colour in relation to that shape, rather than one consisting of a colour per se”.

The opinion of the Advocate General could be interpreted in such a way that the red sole trade mark registration is invalid. However, in his opinion, the Advocate General reiterated that the assessment of substantial value “relates exclusively to the intrinsic value of the shape, and must take no account of attractiveness of the goods flowing from the reputation of the mark or its proprietor”.

Assuming that the Court of Justice decides that the criterion incorporates two dimensional characteristics of shapes, the referring court will need to decide whether substantial value is conferred on the goods by the red sole and if so, whether that is the result of the intrinsic qualities of the red sole of the shoe or whether it is the result of the way in which Christian Louboutin has marketed his goods.

If the Court of Justice follows the opinion of the Advocate General, brand owners will need to be aware that it may become more difficult to protect the shape or appearance of their products when the intrinsic qualities of its two dimensional or three dimensional characteristics confer substantial value on the goods.

Where 3D trademarks have been particularly successful.

A successful example and one of the first 3D registrations involves one of the biggest brands in the world and its iconic branding and packaging, Coca Cola. The brand’s distinctive bottle, featuring its recognisable contouring, was deemed individual enough to receive 3D trademark protection.

Coca Cola’s bottles are instantly equated with the company itself, and Coca Cola has been able to maintain exclusivity for its own bottle’s unique shape and appearance on high street shelves worldwide, helping to set it apart as a market leader.

However, having secured a 3D trade mark registration the brand owner now must now tackle the joys of enforcement. Here we look at some examples of the types of cases being reported.

Mondelez (Toblerone) is among the most recent brand owners to become embroiled in a high-profile dispute surrounding 3D trademark rights. Chocolate producer Mondelez, which produces the Toblerone chocolate bar, threatened legal action against Poundland after Poundland produced a product which was considered distinctly similar in shape and appearance to the well-known triangular bar.

The dispute came after Poundland announced the launch of its new Twin Peaks bar, which featured distinctive gold and red packaging, along with two rows of chocolate in triangular shapes filled with a nut flavouring – similar to that of Toblerone.

Concerned that the similarities could create confusion among consumers, Mondelez launched a legal challenge against the budget retailer in a bid to cease production.

After a lengthy legal case, Poundland’s Twin Peaks bar was deemed too similar to Toblerone and both businesses reached an agreement to rebrand Poundland’s bar.

This case bears similarities to the dispute between Kit Kat producer Société des Produits Nestlé SA and Cadbury UK Ltd, with Nestle attempting to register the shape of its famous four-finger bar.

However, unlike the Toblerone case, the trade mark bid was ultimately unsuccessful. Where the two cases differ lies in the distinctive shape of the packaging. In the case of Toblerone, the packaging clearly outlines and shape of the chocolate inside, following its iconic triangular design; as such consumers automatically recognise the exterior branding as belonging to Toblerone, but more importantly the shape of the packaging results in it being immediately recognisable as pertaining to that particular brand.

In contrast, Kit Kat’s packaging and the ‘Kit Kat’ name were found to be the features which consumers instantly recognised and identified as belonging to Nestle – and not the shape of the bar.

Following the filing, which was made in July 2010, the Court of Appeal ruled last year that the shape of the Kit Kat bar was not distinctive enough for consumers to solely identify it as belonging to Nestle.

In its ruling the court stated that the shape of the bar had not featured in the brand’s advertising, with the product’s wrapper and branding instead the feature by which consumers recognised Kit Kat.

The court also indicated that the wrapping did not in any way display the shape of the bar, concluding that there was insufficient evidence that consumers would identify the product as belonging to Nestle based solely on its shape.

Mr Pennant said: “As demonstrated here, successful 3D trademark registration usually follows the company’s ability to provide significant evidence that it did not fail to meet any of the three main criteria outlined by the courts.

“The more distinctive a brand is, and its individual shape, appearance, and ability to be absolutely linked exclusively with the overarching company, the greater the chance of success.

“We would urge any companies considering applying to register their product as a 3D trademark to thoroughly research the marketplace to get a genuine sense of what a successful application might entail.

“Really evaluate the three main criteria set out by the courts, and objectively analyse where a product could face any challenges.

“Success, while rare, can result in transformative benefits and brand rights for any company.”

The future of 3D trademarks – where do they go next?

3D trademark rights remain a complex and evolving area of intellectual property law.

While still relatively unusual in their application, it is clear that future decisions will help define the scope offered and thus the adoption and commercialisation of these rights.

Could cases such as those discussed above lead to brand owners taking a more considered look at the distinctive character in the shape of its products and their packaging and specifically adapt their marketing campaigns?

One thing these complex cases have taught us is that 3D trade mark applications could have a significant impact on the way producers and manufacturers approach distinctiveness of shape, brand and product creation, and ultimately brand identity going forwards.

It is clear that until such time as more rulings are made, a clear picture of the future of the 3D trademarking industry remains relatively obscure with applicants still potentially facing lengthy and costly legal cases should they apply for a shape-based trademark.

Mr Jenkins warns applicants that they could be faced with a significant wait for outcomes. For example, in the case of Nestle vs Cadbury, the Kit Kat 3D trade marking legal challenge lasted for seven years.

He added: “The coming years could spell a turning point for many brand owners who have been waiting for key decisions.

 “We are hopeful that these will help to define the real scope of the protection offered by these unusual intellectual property rights.”

Despite the obvious associated pitfalls, the length of time, costly legal battles, and ultimately the high probability of failure, Mr Jenkins added that it is unlikely that 3D trade marking will become obsolete in the long term thanks to the potential benefits associated with them.

He added: “The competitive advantage that a 3D trade mark registration could give a brand owner, if it fulfils the necessary criteria and overcomes the hurdles discussed, is quite enticing.  Therefore, the boundaries of the scope of protection will, as normal, be tested.”

Featured in Issue 73 of the World Trade Mark Review 

Need advice for your 3D trade marks? Get in touch