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All bent out of shape

Date: 13 November 2009
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Protection of product shapes through trade mark registration

Is it possible to get IP protection for the shape of a product in Australia? Yes, one way is through trade mark registration.

Key points

  • To gain trade mark registration of a product shape, the shape must generally also have a non-functional "added extra" or distinctive feature, helping the shape to function as a trade mark.
  • Depending on this added extra, substantial evidence of use and the applicant's reputation in the shape trade marks will usually be needed to be accepted for registration.
  • Even so, it seems that some functional product shapes can still be registered with little in the way of an "added extra", depending on the shape itself and the goods for which registration is sought.

Introduction

You would normally protect a novel product shape through design registration, which lasts for up to 10 years. However, an application for design registration must be filed before the design is publicly disclosed or published. If the product is already on the market, it is no longer novel and too late to register the design.

But what if the product shape is the key to the commercial success of the product?  If so, one option is to try and register the shape as a trade mark, especially if you can prove you have a market monopoly in that shape.

It has been possible to register three-dimensional shapes as trade marks for a number of years, and as a result many businesses have tried to register their product shape. However, to date few applicants have been successful.

This raises the question of whether its worth the effort. The answer is definitely yes, if the shape has an added "extra" and is not solely functional.  If the shape has no added extra, there is still a chance but it could be a costly exercise and still end up with a refusal.

The law on shapes as trade marks

There has been much comment in recent court decisions and articles about the registrability of functional shape marks in Australia.  This is due to concern that trade mark registration, renewable every 10 years forever, may give an owner a permanent monopoly in the product shape design.

So what is the legal situation? The Trade Marks Act 1995 allows:

  1. a person to apply for trade mark registration for any three-dimensional shape, including product shapes, and
  2. registration of inherently non-distinctive marks (which would include many product shapes) if the applicant can show that the shape has acquired distinctiveness through substantial use and reputation prior to filing of the application.

However, even though this means in theory that a product shape can be registered as a trade mark, it appears that the majority of functional product shapes have been refused registration.  Many would have been rejected due to the shape not qualifying as a "trade mark".  Even though a "shape" falls within the definition of a "sign" under section 6 of the Act, and all "signs" can be registered as trade marks, to really qualify as a trade mark, the "sign" must be used on or in relation to goods or services.

This comes about through section 7(4) which sets the rules about use of trade marks, and says that "use of a trade mark in relation to goods" means use of the trade mark "upon", or in physical or other relation to, the goods. The trade mark cannot be the product itself, so this requirement seems to exclude registering the actual shape of the goods as a trade mark as it is not a separate "mark" used on or in relation to the product.

Compare this to other types of trade marks, such as words, devices, logos, labels, numbers (and combinations thereof), as well as colours, sounds and scents, all of which are generally applied to or are distinct things from the goods that they are intended to distinguish, for example the word "CABDURY" on a chocolate packet.

This exclusion of functional product shapes from registration relies on interpretation of the Trade Marks Act and pronouncements from the courts (which reflect the policy that trade mark registration should not be a form of de facto design or patent protection).

This does not mean that the exclusion is necessarily set in stone, and some product shapes have and will continue to slip through to registration.

To receive registration an applicant must persuade the Trade Marks Office that a product shape functions as a trade mark.  The best way to do this is to convince the Registrar that some aspect of the shape is not purely functional and is "something added" which helps distinguish the product in the marketplace.

Depending on the nature of the additional feature and how prominent it is, the shape trade mark may be immediately accepted.

If however, the shape appears to be the expected shape of a product, e.g. a bottle with minimal embellishment or decoration, an applicant will have to demonstrate that the shape (1) functions as a trade mark and (2) in doing so is capable of distinguishing the goods.  If successful, the shape should be accepted for registration.

A prominent example is the Kit Kat confectionery shape (application no. 822779 in class 30) which was initially accepted but successfully opposed and ultimately not registered: 

Most would say that this "trade mark" was a solely functional shape, simply being two bars joined together by a thin base. It appears though that the examiner thought otherwise, deciding that this shape functions as a trade mark, and accepting Nestle's evidence aimed at showing that through long term and substantial use the shape exclusively identifies chocolate bars of Nestle.

However Cadbury Schweppes and Effem Foods opposed registration and succeeded on the basis that the shape is purely functional and cannot operate as a trade mark.

Functional product shapes which have recently been accepted:

Following are some additional examples of Australian trade mark applications for product shapes, which have been accepted for registration, and some which appear to be purely functional with no added feature and therefore of doubtful registrability.  However, much relies on the description of the "goods" in the application, and whether an applicant can persuade the examiner that the product shape functions as a trade mark.

Review the bottle cap example below, which was accepted for registration of both bottles and bottle caps.  Application no. 1143995 was accepted for "Bottle caps, not of metal; sealing caps, not of metal; cap closures for bottle (not of metal); bottle lids; plastic caps for beverage containers; non metallic closures for bottles and other containers" in class 20, "Bottles including drink bottles made of plastic" in class 21, and "drink bottles adapted for sport" in class 28.

Is this a purely functional shape for a bottle cap? Or are the triangular protrusions non-functional and enough to qualify as an added extra?

The next shape, (application no. 1288817) was accepted for "Playthings being children's play equipment; combination pool and sandpit playthings; pools; sandpits; children's pools; children's sandpits" in class 28:

Surely this is the product shape and not a trade mark?

The following international registration (IR 916394) was accepted for "Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices" in class 3:

Arguably this bottle shape has some additional features which are not solely part of the bottle shape or at least are clearly decorative.  Is this sufficient though?
 
The shape below (application no. 1210983) was accepted for "Perfumery, cosmetics, deodorants for personal use, essential oils, eau de cologne, hair spray, breath freshening sprays" in class 3:

This seems to be an extremely novel design of a bottle in a crucifix shape, which can easily be called an "added extra" or additional distinctive feature.

Product shapes with an "added extra":

The next shape (application no. 668406) was accepted for "Soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices" in class 3:

This shape has had colour and artwork added, both of which make the shape even more distinctive looking elevate it to more than a simple product shape.

And finally, international registration (IR956073) was accepted for "Honey; tea; tea bags filled with tea; tea for infusions; herb tea; herbal tea; iced tea; tisanes; chocolate; hot chocolate; flavourings for beverages; herbal infusions; bonbons" in class 30 and "Herbal food beverages" in class 32:

This shape is clearly not the shape of the listed goods, and the leaf and stem protruding from the pyramid is in itself the added extra that can mean the difference between rejection as a trade mark and approval by the Trade Marks Office.

State of the Australian Trade Marks Register

In Australia there are currently 656 registrations of "shape" marks, but this is somewhat misleading as many are devices or contain other registrable features such as word trade marks or distinctive devices or artwork.

In addition, at the time of writing, there are 177 pending applications for shape marks.  Of those, only 27 have been accepted (with only three under opposition).  Most of the now accepted applications date from 2006-2007, so have taken some time to reach this stage.

Conclusion

In summary, all is not lost and it may be possible to register your product shape as a trade mark, depending on whether the shape has that "added extra". The best approach is to show us and we can develop a good strategy for protecting your product shape, or some other aspect of the branding if the product shape appears to be too difficult to register on its own.

Tags:  Product shapes, trade marks
 
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