In
today’s world the competition in the market place is immense. If a trader wants
to survive in the competitive market and make a profit they have to find new
and improved ways of marketing their goods which will appeal to their target
market. One of the methods employed by traders is to create their goods in
different shapes to make them stand out from the other traders in the market
which will make their products appeal more to the consumer. One of the easiest
way to gain an advantage over the competition is to register the shape of the
particular product.
The
reasoning behind the stringent ground for refusal of shapes as trademarks is
done to prevent one trader from getting a monopoly on the technical solutions
or functional characteristics of a product which other traders or competitors
are likely to want to use on their products.
In
the United States of America the term ‘trade dress’ used to denote the distinct
appearance of products including the labels and the wrapping and the packaging
of the product. However nowadays in the modern world of technology and
development the practice has been to include the shape and design of the
product within the meaning of the term ‘trade dress[1].
In
the US the shape of the product can be a trademark itself if it has acquired
distinctiveness and is not functional[2].
The designs of products and the shapes of the products are not inherently
distinctive and because of that require demonstration of secondary meaning.
Without a shadow of a doubt the most famous shape trademark of all time has to
be the trademark for the bottle of Coca Cola. The unique shape of the bottle
has made it one of the most recognisable shapes in the world no matter where
you go. The Coca Cola bottle was given a trademark for it shape in 1977 by the
USPTO. It is believed that consumers associate the unique shape of the bottle
with Coca Cola, thus it can be said that the shape has acquired distinctive and
has acquired secondary meaning.
In
the Wal-Mart Stores[3]
case the US Supreme Court was of the opinion that product design could never be
inherently distinctive, so in order to register a shape mark the following
factors would have to be looked at:(1) whether the shape represents a
functional feature of the product itself (2) whether acquired distinctiveness
exists.
In
Gibson Guitar Corp vs. Paul Reed Smith Guitars[4]
the court stated that the concept of trade dress and trade marks were different
and distinct legal concepts. The court stated that it was necessary to
establish that the trade dress was distinctive and had attained secondary
meaning and that it wasn’t functional otherwise a trademark would not be
registered for that particular product.
In
the UK, Registration of a trademark must be refused under Section 3(2) of the
1994 Act to a sign which consists exclusively of the shape:
(a) The
shape which result from the nature of the goods themselves or
(b) The
shape of goods which is necessary to obtain a technical result or
(c) The
shape which give substantial value to the goods[5]
In
the UK a trademark which consists of shape or their packaging is registrable.
When it comes to shape marks the problem of graphical representation is not
usually an issue except in very few cases.
In
Philip Electronics vs. Remington Consumer Product Limited[6] the ECJ stated that shapes which have a
technical use and are functional in nature such as the shape and configuration
of an electric shaver cannot be allowed to be registered as a trademark.
In
the case of Proctor & Gamble Cos Tm[7]
the application for a trademark for a bar of soap which was in the shape of a
tablet was refused as the court felt that it was just another one of the
countless number of the traditional bars of soap in the market . Also the fact
that the soap was easier to grasp because of its shape made it the functional
element of the product.
In
another case the OHIM Grand Board of Appeal refused a trademark which dealt
with the popular children’s toy Lego. The board held that the Lego bricks
performed various functions that were technical in nature especially the
interlocking facility of one brick with another[8].
In the
year 2007 the ECJ in the Dyson vs. Reg .TM[9]
the court held that the application for the trademark to register all the
various shapes of transparent vacuum cleaner bins had not been successful
because the mark was not specific enough
to be a sign, and also if this trademark was given it would be granted it would
give the trademark holder an unfair advantage over the other competitors in the
market.
In
India the Trade Marks Act 1999 included within the definition of the term
trademark the ‘shape of the good’ and ‘their packaging’; this act came into
force in the year 2003. Under the Trade Marks Rules passed in the year 2002 it
says that all representations of trademarks are required to be durable and
satisfactory[10].
An example of a trademark which registered a shape in India is the classical
Zippo lighters which registered their lighter shape as a trademark.
[1]
Haggerty Thomas P, A blue
note: The Sixth Circuit, production design and the confusion,Tulane Journal of
Technology & Intellectual Property, 8 (2006) 219
[2]
Wal-Mart Stores Inc vs. Samara
Bros Inc, 529 US 205, 2130214 (2000)
[3]
Wal-Mart Stores Inc vs. Samara
Bros Inc, 529 US 205, 2130214 (2000)
[5]
Section 3(2) TMA Act 1994
[6]
(2002) EMTR 81
[9]
Dyson Ltd v Registrar of Trade Marks (C-321/03) [2007] Bus. L.R. 787; [2007] E.C.R. I-687;
[2007] 2 C.M.L.R. 14.
[10]
Trade Marks Rules 2002 r.30
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