Three-dimensional (3D) trade marks are currently something of a hot topic and some of the biggest names in the licensing, toy and nursery sectors have had their fair share of media exposure in recent years because of their success, or indeed failure, to get their brand protected with this fairly new form of IP rights.
Coca Cola, Mondelez (Toblerone), Hard Rock Café, and Chanel are a few to have obtained protection for their product’s shape or packaging because of unique and distinctive characteristics; these successful applications undoubtedly cement their place in the commercial marketplace and support ongoing success. In contrast Nestle (Kit Kat), Jaguar Land Rover, Lego and Rubik’s Brand (Rubik’s Cube), all failed in their bids for 3D trade mark protection.
At Wynne-Jones IP our trade mark team believe that 3D trade marks can provide unparalleled commercial benefits and industry success. The Rubik’s Cube high-profile case when they lost their 3D trade mark rights in 2016 should have made toy companies sit up and think about 3D protection and ensuring they are adequately protected for now, and the future. The EUIPO has taken some harsh decisions and several brands have failed to gain this protection, when many would agree they were probably deserving of them.
But don’t let this discourage you if you’re confident you have a legitimate case in seeking this protection – give our team a call and we’ll be able to have an open discussion on your queries, concerns and requirements.
What is different about a 3D trade mark?
It needs to fulfil the standard criteria for registration but must not be descriptive and needs to be able to distinguish goods and/or services of one undertaking from those of others. Simply put, the more uncommon or fanciful the shape, the more likely the rights will be granted.
What makes it desirable?
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, in relation to a range of goods and/or services. This provides the owner with a clear commercial advantage in both manufacturing and sales, plus a monopoly in perpetuity so long as it’s renewed and used.
The 3D criteria and those who’ve succeeded and failed:
This first criterion is where the shape of the goods is unique to the generic function of them. For example, the shape of a football will be refused protection. Stokke A/S was granted a 3D trade mark for its Tripp Trapp high-chair but this was invalidated because it was found that the shape results from the nature of the goods themselves.
The second criterion has been the pitfall for many branded products such as Lego - the mark applied for was a shape with essential characteristics which performed the technical function of the product i.e. Lego bricks attaching to each another. Days after Lego’s registration was obtained competitor Mega Brands contested it and a lengthy legal process followed with Lego’s registration ruled invalid as its shape allowed, and was necessary, for the product to achieve a technical result.
The third criterion 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; this criterion has become the subject of many legal cases. In the famous 2016 London Black Cab case the cab’s shape was found to be giving substantial value to the goods and was rejected as it was already registered as a design.
A successful example and one of the first 3D registrations is for the global iconic drinks brand Coca Cola. The distinctive bottle, with its recognisable contouring, was deemed individual enough to receive 3D trade mark 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.
The Wynne-Jones IP viewpoint: “The more distinctive a brand is, and its individual shape, appearance and ability to be linked exclusively with the overarching company, the greater the chance of success. We encourage any companies considering registering their product as a 3D trade mark to thoroughly research the marketplace and talk to us. 3D trade mark rights remain a complex and evolving area of intellectual property law but future rulings will help define the scope of registrations made. Success, whilst rare, can result in transformative benefits and brand rights for any company.”