Firstly, three-dimensional shapes of goods must be “significantly” different from the normal shape goods of that type take to merit trade mark protection, an EU court has said.
The EU General Court said it could “prove more difficult” for companies to register trade marks for shapes than other than brand names and images.
EU trade mark law recognises that shapes or other signs capable of being represented graphically can qualify for trade mark protection if they are “capable of distinguishing” one company’s goods or services from those of its rivals.
The legal test to determine whether the mark is capable of distinguishing involves evaluating what the ‘average consumer’ of the type of product to which the mark applies perceives when they see that mark, such as a shape, relative to the other goods of that type in the market.
The average consumer is deemed to be reasonably well informed and reasonably observant and circumspect. If it is shown that a mark is devoid of any distinctive character in the eyes of the average consumer, then it cannot be trade mark protected.
“Account must be taken of the fact that the perception of the average consumer is not necessarily the same in relation to a three-dimensional mark consisting of the appearance of the product itself as it is in relation to a word or figurative mark consisting of a sign which is independent of the appearance of the products it designates,” the General Court said.
“Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or textual element, and it could therefore prove more difficult to establish distinctive character in relation to such a three-dimensional mark than in relation to a word or figurative mark,” it said. “In those circumstances, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of [EU laws on Community trade marks].”
“Therefore, where a three-dimensional mark consists of the shape of the product in respect of which registration is sought, the mere fact that that shape is a ‘variant’ of a common shape of that type of product is not sufficient to establish that the mark is not devoid of any distinctive character…. It must always be determined whether such a mark permits the average consumer of that product, who is reasonably well informed and reasonably observant and circumspect, to distinguish the product concerned from those of other undertakings without conducting an analytical examination and without paying particular attention,” the Court said.
Based on the above criteria it is difficult to fulfil the requirements for a 3D trade mark compared to 2D trade marks but it is not impossible to qualify for 3D trade mark protection.
If you would like advise on protecting your 3D brand, please get in touch and one of our expert solicitors will be able to help.