The shape of a blender was held to be devoid of distinctive character under Regulation 40/94 article 7(1)(b) and there for that shape was considered incapable of functioning as a trade mark. However, in examining the decision the OHIM Board of Appeal found that a shape mark which lacks the distinctiveness applied only to goods for which the shape mark was a true description of that shape.
A trade mark is a sign which can be represented graphically which is capable of distinguishing the goods or services of one undertaking from those of another undertaking. Should a mark fail to comply with this definition of trade mark then a proposed trade mark will be rejected as falling foul of s.3(1)a of the Trade Mark Act 1994. However, in addition to this a shape mark has further restrictions on its ability to be registered and therefore to subsist as a trade mark. These are briefly explained:
A shape mark must not consist of a shape which results from the nature of the goods themselves.
This means for example the shape of a football for a business which sells footballs. The logic of this is that if a trade mark was available this would grant and unwarranted monopoly on the trade mark owner – the effect of which is that other businesses will not be able to affix their marks to a football.
A shape mark must not consist of a shape which is necessary to obtain a technical result.
This prevents people from acquiring a perpetual right in a technical solution- this is logical as technical solutions should be protected by a patent. Phillips attempted to argue that their three headed rotary shaver the European Court of Justice held that Phillips shaver could not be protected in this way even when there existed alternative technical functions.
A shape mark must not consist of a shape which gives substantial value to the goods.
A literal interpretation of this provision could lead to confusion, however, the provision excludes shape-marks which are aesthetically pleasing to the eye only. An often use example would be the Rolls Royce Grill at the front of their vehicles – whilst this is pleasing to the eye and arguable this does add substantial value, the grill itself distinguished and installs in the mind of the consumer that this vehicle was produced by Rolls Royce.
The real advantage of a successful registration of a shape mark is that the trade mark owner will be granted a perpetual monopoly in that shape (provided the renewals are completed when required). Are dedicated team of trade mark solicitors can provide you with all the information as to the likelihood of registering not only a shape mark but also every type of trade mark available.