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Tuesday, 6 December 2011

Shapes As Trademarks

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)

[4] Gibson Guitar Corp v Paul Reed Smith Guitars, LP 423 F 3d 539 at 543 (6th Cir., 2005).
[5] Section 3(2) TMA Act 1994
[6] (2002) EMTR 81
[7] Proctor & Gamble Co's Trade Mark Application (Shaped Soap) [1998] R.P.C. 710 TMR
[8] Lego Juris A/S v Mega Brands Inc (R-856/2004) [2007] E.T.M.R. 11
[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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