Can you still get a registered trade mark for a 3D item?

January 2018 | SPECIAL REPORT: INTELLECTUAL PROPERTY

Financier Worldwide Magazine

January 2018 Issue

What if your business could protect its name or even its products indefinitely? A patent would protect you for 20 years, a registered design for 25 years and copyright for 70 years from the date of death of the author, but these are all trumped by a registered trade mark, which can potentially last forever. In fact, the very first mark to be registered in the UK was filed on 1 January 1876 and is still in existence today (the famous ‘Bass’ Red Triangle, then and still used for ale).

Owning a trade mark is therefore an incredibly valuable tool, as shown by the number of big brands that decide to protect their name or key products with registrations for anything from word marks, to slogans, to smells and sounds, to three-dimensional shapes. To put this into context, there are registered shape marks for products such as the Toblerone chocolate bar, Duracell batteries, Perrier’s water bottle, the Rubik’s Cube and Bic biros, to name just a few of the hundreds of shape marks registered to protect products for a potentially indefinite period of time.

A registered trade mark gives its owner the exclusive right to use the mark in connection with the goods or services for which it is registered and to sue any person who uses an identical or similar mark in the course of trade in connection with identical or similar goods without authorisation for trade mark infringement.

Furthermore, when compared to the process for applying to register a patent or a design, applying to register a trade mark, in any form, is relatively simple. There must not be a previous registration for the mark for the same or similar goods, but then, the other main requirement for registrability is that it must be capable of being represented graphically and of distinguishing the goods or services of one undertaking from those of another. There are likely to be two additional hurdles for a three-dimensional mark. First, marks are unlikely to be registered if they are not distinctive enough for the depicted product to relate to a specific company. Second, where the shape sought to be protected adds substantial value to the product, above and beyond the value it would have without that shape.

Applying to register shape marks in particular is not therefore without its difficulties. In a recent case involving the two chocolate making giants Nestle and Cadbury, Nestle applied to register a three-dimensional trade mark for its well-known four-finger ‘Kit Kat’. The shape of the mark applied for corresponded to the shape of a Kit Kat, without the Kit Kat logo which is embossed onto each of the fingers of the actual product. Nestle was applying for protection for the shape of the finger, to stop others selling the same shape, no matter what name or mark was applied to it.

Cadbury successfully opposed the registration application on the grounds that the mark was not distinctive of Nestle, and that the essential features (the rectangular ‘slab’ shape and the presence, position, depth and number of grooves between each ‘finger’) were necessary to allow the product to be broken up and to determine the number of ‘fingers’ eaten. Nestle argued that the mark had nevertheless acquired distinctive character through its use prior to the application date. The courts disagreed. Nestle appealed in February 2017, but once again, the appeal was rejected. A key issue was whether the test for assessing distinctiveness required consumers to have relied upon the mark before buying – in other words, do consumers buy the product because of the trade mark and its indication that the product was Nestle’s.

The court held that, although acquired distinctiveness could be shown by proving that a consumer had come to rely upon the mark as an indication of origin, such reliance was not a precondition for registration. It was enough to establish that a consumer had come to perceive the product designated by the mark as originating from a particular undertaking, in this case Nestle. However, Nestle was unable to prove that.

Of the hundreds of three-dimensional registered shape marks listed on the UK register, very few of these have been taken to court and successfully managed to withstand such challenges. One three-dimensional mark that has, however, managed to retain its registration despite a court challenge, is a mark owned by Lego, in the shape of a Lego man, registered, among other things, for ‘games and playthings’.

Two years ago, Lego successfully fought off an application to invalidate its EU trade mark, made on the grounds that the shape of the trade mark was determined by the nature of the goods themselves (namely, the possibility of joining them to other interlocking building blocks for play purposes) and that the toy figures in question provided technical solutions (namely, being combined with other building blocks). The court disagreed. It held that the essential characteristics of the figures (namely the bodies, heads, arms and legs), did not allow the figures to be joined to interlocking building blocks.

The ‘Kit Kat’ case clearly illustrates the inherent difficulties facing applicants when attempting to register or enforce three-dimensional trade mark registrations in respect of the shape of goods.

One of the judges in the Kit Kat case addressed this very issue: “the relevant public’s perception is not necessarily the same in the case of a three-dimensional mark consisting of the shape of a product… as it is in the case of… a word or figurative mark consisting of a sign which is independent from the appearance of the products it denotes”. In other words, it is much easier to register a mere word or figurative mark than a shape mark as a trade mark simply because people do not necessarily assume that a product shape originates from a single source. Future applicants should take this as a warning of the uphill struggle they could face.

Potential future applicants should therefore consider whether a three-dimensional trade mark is actually the most appropriate method of protection. In another recent case involving taxi manufacturer The London Taxi Company, the judge found that a UK registered mark and an EU registered mark were invalid because they consisted exclusively of the shape (of a London taxi) which gave substantial value to the goods, at least in part due to the existence of a registered design protecting the UK mark. This is of particular interest, as it raises the question of whether applicants would be better off applying for a registered design (or seeking to rely on an unregistered design), than applying for a shape mark if they want to protect a three-dimensional object.

The requirements for registering a design differ from those for applying for a trade mark. A design must be new (so no identical design can have been disclosed to the public anywhere in the world prior to the relevant date, subject to certain exceptions) and it must have individual character (i.e., it must give a different overall impression from earlier designs to the ‘informed user’, who is a person familiar with the products in the field, but not a design expert). While a registered design only confers a 25-year monopoly right in the design, similar to the rights under a trade mark, it gives the exclusive right to make articles incorporating the design, allowing the owner to sue for infringement even where the defendant did not copy the design.

While the length of protection afforded by a registered design is significantly shorter than that afforded by a trade mark and applying to register a design will come with its own challenges, a design would likely face fewer hurdles and therefore be a better option for a three-dimensional object. After all, in this fast-changing world, there are not that many designs that need protection for more than 25 years.

Richard Kempner is a partner and Alice Chaplin is a solicitor at Kempner & Partners LLP. Mr Kempner can be contacted on +44 (0)113 393 1921 or by email:kempner@kempnerandpartners.com. Ms Chaplin can be contacted on +44 (0)113 457 3462 or by email: chaplin@kempnerandpartners.com.

© Financier Worldwide

Richard Kempner and Alice Chaplin

Kempner & Partners LLP

Intellectual property

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