In a bid to protect a brand, many businesses look to trademark their products and designs. A matter which has been of much controversy in the intellectual property world is whether a three dimensional shape can be trademarked.

What is a trademark

A Trademark allows for the registration of a mark (such as words letters, drawings and symbols) and allow the mark owner and exclusive right to use them.

Trademarks are usually registered for a term of 10 years, on the expiration of which the trademark may be renewed.

What is required to trademark a three dimensional shape?

In order to trademark a shape, that shape must have distinctive character or have acquired distinctive character through use. However, the basis of such cannot apply where the shape is necessary to obtain a technical result – as was found in the instance of Lego when wishing to trademark it’s brick.

Examples where it has been attempted to trademark a shape

Perfume Bottles – there are many examples of people attempting to trademark the shape of a perfume bottle. One success story is Christian Dior’s J’adore bottle, which was trademarked by the Swedish and Danish Trademark offices [but was however, refused registration in China earlier this year].

Kit Kat – earlier this year, Nestle attempted to trademark the classic four finger chocolate treat. The court ruled that the shape had “no inherent distinctiveness” and therefore other confectioners can manufacture their own versions of the kit kat without breaching any intellectual property rights. Another chocolatey example is the Toblerone. Poundland argues that the Toblerone shape is no longer distinctive enough to be a valid trademark [it was previously registered in 1997]. This matter is currently ongoing so it will be interesting to see the court’s decision in respect of an existing trademark.

London Taxi – The recent case of London Taxi Corp Ltd v Frazer-Nash Research Ltd affirms this position. In this case, the London Taxi Company wanted to trademark the traditional London Black Cab and therefore prevent a rival firm from using that particular shape of car. The Court held that the cab could not be trademarked as the shape was not distinctive enough and there was no evidence to show that the mark had acquired distinctive character through use.

How does this affect me?

The London taxi case is just one in a long line of cases where it has been found that a shape is not distinctive enough to be protected by a trademark. The aim is not to unfairly restrict competition, however, it is understandable that businesses want to protect their brand and products, so what steps can you take to protect your brand?

  1. Use a logo or name that is capable of being registered – Words and symbols are much easier to get trademarked than a shape.
  2. Consider where you want to protect your brand – Trademarks can be registered nationally, throughout the European Union and potentially globally. Therefore you will need to consider realistically where it is that you need to protect your mark from competition. Marks are also registered against particular ‘classes’ to specify the goods or services the mark will be used on.
  3. Other forms of Intellectual Property Protection – Just because you cannot get a trademark registered does not mean that no protection is available to you. Other forms of intellectual property include copyright, patents and industrial designs.

Should you wish to discuss trademarks or intellectual property rights, please contact a member of the Advisory and Dispute Resolution team of EHL Commercial Law on 0330 024 9643.