| A trademark conveys the image, personality and | | | | technical result or which gives substantial value to |
| the origin of the products to a customer. Through | | | | the good cannot be registered. It provides a |
| this information, the consumer will make an | | | | limitation to the trademark system for shape |
| economic decision to purchase. Thus, trademarks | | | | marks in order to maintain a balance between |
| are crucial in developing a company’s | | | | intellectual property rights. Relative grounds refuse |
| strategy. | | | | registration if a later trademark is in conflict with |
| Brand owners invest a lot of money in advertising | | | | an earlier trademark. |
| campaigns and in market studies to find | | | | In Insurance Ltd v. Direct Line Insurance Plc in 13 |
| successful products that consumers are likely to | | | | December 2006 an insurance company registered |
| buy. Brand owners should protect their valuable | | | | a three-dimensional trademark representing a |
| property against competitors aspiring to benefit | | | | telephone on wheels in class 36 referring to |
| from the attractive brand and therefore damaging | | | | insurance, financial and monetary services. |
| the uniqueness of the trademark. With a high level | | | | Another insurance company tried to register as a |
| of competition, transactions that must proceed | | | | three-dimensional trademark a mouse with wheels |
| rapidly and aggressive business behaviour, brand | | | | for the same type of services. The application |
| owners hoped they could get more protection for | | | | was refused. The similarity between the two |
| their brand by registering shape marks. | | | | signs could lead the average consumer to |
| Section 1 (1) from the Trademark Act 1994 | | | | confusion in believing that the two trademarks |
| provides that: “a trademark means any sign | | | | were linked. |
| capable of being represented graphically which is | | | | Bongrain SA’s Trademark application in 17 |
| capable of distinguishing goods or services of one | | | | December 2004 an applicant tried to register the |
| undertaking from those of other | | | | shape of some cheese. Even though, the shape |
| undertakings.” This broad definition enables | | | | was unusual the Court preferred to refuse the |
| traders to use new types of trademarks such as | | | | registration to maintain free competition between |
| three-dimensional trademarks or shape marks | | | | traders in that sector of consumer goods. |
| capable of being represented on a recorded or | | | | The decisions concerning the acceptance of |
| published form. These marks are signs consisting | | | | registration for shape marks are linked with the |
| of a product’s shape, packaging or others | | | | type of product. The more exclusive and rare the |
| three-dimensional signs. | | | | product is, the more IP authorities accept the |
| Nevertheless, intellectual property authorities are | | | | application. For luxury goods, the purchaser will |
| reluctant to allow registration to three-dimensional | | | | pay attention to the shapes of the goods to |
| trademarks. The idea behind this is to avoid | | | | comply with the high standard of product he is |
| excessive monopolies that would paralyse the | | | | looking for. The consumer knows exactly what |
| market, competition and designers from creating | | | | product he wants to purchase. With the act of |
| innovative products. | | | | purchase, the customer wants the product to be |
| With that in mind, this article will consider and | | | | linked with the manufacturer. That is the reason |
| move into the issues of registering a | | | | why IP authorities are keen to allow registration |
| three-dimensional trademark following key | | | | on luxury products, as there are no doubts about |
| questions: why should a product be protected by | | | | the intention of the purchaser. |
| using a shape mark? How to overcome the | | | | On the contrary, common shapes will have |
| refusal of registration by national authorities? | | | | difficulties in attaining registration. Does the |
| Why register a shape mark? | | | | consumer pay attention to the shape? Marketing |
| Registering is the best way to secure a | | | | people may answer that it is unconscious and that |
| trademark. The owner of a registered trademark | | | | the consumer does not associate most shapes |
| has exclusive rights in that trademark. It means | | | | with brands. |
| that no one else can use the trademark without | | | | How to convince IP authorities? |
| consent. | | | | The European Court of Justice has concluded that |
| The shape, product or the packaging of the | | | | three-dimensional trademarks followed the same |
| product is represented more precisely on the | | | | requirements as traditional trademarks but in |
| register. The possibility to visualize the product | | | | practice, national offices are reluctant to allow |
| three-dimensionally gives a better understanding | | | | registration. The problem is that few three |
| of the quality of the product. Shape marks | | | | dimensional marks are seen as being distinctive |
| provide a useful tool to customs to seize | | | | enough. |
| counterfeit products. Even though registering a | | | | A product shape or its packaging must clearly |
| three-dimensional trademark presents advantages, | | | | contrast from the ordinary item of commerce of |
| applicants often face refusals from IP authorities. | | | | the category of product concerned so a higher |
| Grounds for refusal of registration | | | | standard of distinctiveness is expected. The |
| Sections 3 and 5 of the Trademark Act 1994 set | | | | applicant will have to put more effort to prove |
| out two grounds for refusal of registration, | | | | the originality of the shape. For certain types of |
| namely absolute grounds and relative grounds. | | | | goods, three-dimensional trademarks are more |
| Absolute grounds, relating to the nature of the | | | | appropriate to have a better perception of the |
| mark itself, refuse registration to signs that do | | | | product than word mark. Surveys on the average |
| not comply with the definition of a trademark | | | | consumer perception of the shape as well as |
| given by section 1 (1) of the Trademark Act | | | | expert witnesses could be helpful in this area. |
| 1994. A trademark without any distinctive | | | | In theory, registering a three-dimensional |
| character cannot be registered. It is the same | | | | trademark should not be more difficult than |
| case for trademarks that describe the | | | | registering more traditional marks. In practice, |
| characteristics of goods or services. A generic | | | | trademark owners face complications especially in |
| sign that entered the current language follows the | | | | relation to consumer goods. As three dimensional |
| same regime. Section 3 (2) states that a shape | | | | marks become more common hopefully national |
| resulting from the nature of the goods | | | | office will offer clearer guidelines and fewer |
| themselves or which is necessary to obtain a | | | | refusals. |