When a harmonised trade mark law was introduced in the EU in the 1990s, one of its most appealing features was the possibility of protecting distinctive product or packaging shapes as registered trade marks. Unfortunately, a series of poor decisions by the European Court has cast a long shadow over that earlier bright new dawn.
Whilst it is, in principle, still possible to protect a shape as a registered trade mark in the EU, the manner in which the practice has developed has made it extremely difficult, some would say virtually impossible, to persuade the authorities to accept a shape mark as distinctive in the absence of evidence of acquired distinctiveness. According to the authorities only trade marks that significantly deviate from the norm or from what is common in the sector involved, and therefore have an essential function in indicating origin, are distinctive.
Further, if you are to progress on the back of evidence of acquired distinctiveness, you have to establish that throughout the EU (whatever that means). So, sales in all 28 countries, accompanied by appropriate survey evidence, may well be needed. Even that may not be enough to get you home.
Then there is the ever present difficulty of a lack of consistency in EU trade mark practice. Compare, for example, the acceptance of Nestle Waters’ ridged bottle (CTM 922179) with the refusal of Adelholzener’s ridged bottle (CTM 8373599) and the acceptance of Galliano’s liqueur bottle (CTM 482257) with the refusal of Old St. Andrew’s whisky bottle (CTM 11646619). Concerns about a lack of consistency in EU trade mark practice however are rather like death and taxes, they will always be with us.
A further problem with the position on 3D marks in Europe is that, even if the authorities accept a shape mark as inherently distinctive because it significantly differs from the norm, they then tend to turn to another absolute ground of rejection in order to refuse registration. This is that the shape, being very distinctive, because it substantially deviates from the norm, must then, by definition, “give substantial value to the goods”.
The latest example of this perverse thinking is the European Court’s decision in the Tripp Trapp chair case (Hauck v Stokke; C-205/13) discussed in this issue of MakeYour Mark. This ruling merely compounds the error of the General Court in the earlier Bang &Olufsen case (T-508/08).
So, as the owner of a shape trade mark, you tend to be damned if you do have a very distinctive trade mark because that will add “substantial value” and damned if you don’t have a very distinctive trade mark because that will lead to a finding that the mark is non-distinctive.
The public policy underlying this position would seem to be that, whatever trade mark law may say, the authorities do not believe that shape marks, particularly shape marks for the products themselves, as opposed to shape marks for product packaging (e.g. Coca Cola bottle, Freixenet bottle), should be the subject of registered trade mark protection. The not so hidden message seems to be that the shape of products and, to a lesser extent, product packaging, should be the subject of registered (or unregistered) design protection, an IP right of limited duration that allows third parties to copy such a shape once the period of monopoly expires.
It seems unlikely that this trade mark practice on shape marks will change any time soon in the EU so the message to brand owners when developing new products and product packaging is increasingly, get registered design protection (if you can) for the shape of that new product or product packaging.