3D Trade Marks – Yes, there really is such a thing! All You Need to Know (& Understand!)

3D Trade Marks – Yes, there really is such a thing! All You Need to Know (& Understand!)

 

Three-dimensional (3D) trade marks are currently something of a hot topic and some of the biggest names in the licensing, toy and nursery sectors have had their fair share of media exposure in recent years because of their success, or indeed failure, to get their brand protected with this fairly new form of IP rights.

Coca Cola, Mondelez (Toblerone), Hard Rock Café, and Chanel are a few to have obtained protection for their product’s shape or packaging because of unique and distinctive characteristics; these successful applications undoubtedly cement their place in the commercial marketplace and support ongoing success.  In contrast Nestle (Kit Kat), Jaguar Land Rover, Lego and Rubik’s Brand (Rubik’s Cube), all failed in their bids for 3D trade mark protection.   

At Wynne-Jones IP our trade mark team believe that 3D trade marks can provide unparalleled commercial benefits and industry success.  The Rubik’s Cube high-profile case when they lost their 3D trade mark rights in 2016 should have made toy companies sit up and think about 3D protection and ensuring they are adequately protected for now, and the future.  The EUIPO has taken some harsh decisions and several brands have failed to gain this protection, when many would agree they were probably deserving of them.  

But don’t let this discourage you if you’re confident you have a legitimate case in seeking this protection – give our team a call and we’ll be able to have an open discussion on your queries, concerns and requirements.

What is different about a 3D trade mark?

It needs to fulfil the standard criteria for registration but must not be descriptive and needs to be able to distinguish goods and/or services of one undertaking from those of others. Simply put, the more uncommon or fanciful the shape, the more likely the rights will be granted.

What makes it desirable? 

If registered, it should provide the owner with a right to the exclusive use of the shape of the product itself or for the packaging, in relation to a range of goods and/or services. This provides the owner with a clear commercial advantage in both manufacturing and sales, plus a monopoly in perpetuity so long as it’s renewed and used.

The 3D criteria and those who’ve succeeded and failed: 

This first criterion is where the shape of the goods is unique to the generic function of them. For example, the shape of a football will be refused protection.  Stokke A/S was granted a 3D trade mark for its Tripp Trapp high-chair but this was invalidated because it was found that the shape results from the nature of the goods themselves.

The second criterion has been the pitfall for many branded products such as Lego - the mark applied for was a shape with essential characteristics which performed the technical function of the product i.e. Lego bricks attaching to each another.  Days after Lego’s registration was obtained competitor Mega Brands contested it and a lengthy legal process followed with Lego’s registration ruled invalid as its shape allowed, and was necessary, for the product to achieve a technical result.

The third criterion relates exclusively to the intrinsic value of the shape and does not take any account of the attractiveness of the goods flowing from the reputation of the trade mark or its proprietor; this criterion has become the subject of many legal cases.  In the famous 2016 London Black Cab case the cab’s shape was found to be giving substantial value to the goods and was rejected as it was already registered as a design.

A successful example and one of the first 3D registrations is for the global iconic drinks brand Coca Cola.  The distinctive bottle, with its recognisable contouring, was deemed individual enough to receive 3D trade mark protection.  Coca Cola’s bottles are instantly equated with the company itself, and Coca Cola has been able to maintain exclusivity for its own bottle’s unique shape and appearance on high street shelves worldwide, helping to set it apart as a market leader.

The Wynne-Jones IP viewpoint: “The more distinctive a brand is, and its individual shape, appearance and ability to be linked exclusively with the overarching company, the greater the chance of success.  We encourage any companies considering registering their product as a 3D trade mark to thoroughly research the marketplace and talk to us.  3D trade mark rights remain a complex and evolving area of intellectual property law but future rulings will help define the scope of registrations made.  Success, whilst rare, can result in transformative benefits and brand rights for any company.”

Related News

US Inventor Declarations and Assignments
news

US Inventor Declarations and Assignments

After a patent application has been filed, the inventor may be required to sign and submit various forms.  What happens if this is several years into the patent process, and the inventor can no longer be reached to sign these forms?  And what can you do now to prevent any complications from arising?

UKIPO ending temporary fee changes on 31 March 2021
news

UKIPO ending temporary fee changes on 31 March 2021

The UK Intellectual Property Office (UK IPO) temporarily reduced or removed certain official fees associated with patents, trade marks and registered designs because of the disruption caused by the Coronavirus pandemic. However, the temporary fee changes are set to end on 31 March 2021.

Insurance for IP Litigation Costs
news

Insurance for IP Litigation Costs

If you own any intellectual property (IP) rights, are you concerned about your exposure to litigation, and how you will finance any legal action?  One way to address this concern is by means of an insurance policy.

Does owning IP rights improve economic performance?
news

Does owning IP rights improve economic performance?

A recent study performed by the European Patent Office (EPO) and the European Union Intellectual Property Office (EUIPO) has shown that companies which own at least one patent, trade mark or registered design generate on average 20% higher revenues per employee and pay their staff on average 19% higher wages compared to companies that do not own any of these intellectual property (IP) rights.

Let it go!
news

Let it go!

Keeping an IP budget afloat despite sunk costs.

The cost of securing IP can be heavily front loaded. Examples of such costs include patent drafting, pre-filing searches, filing fees, etc. These costs become “sunk” costs in that they cannot be recovered. Because IP protection can be a relatively long process, at any time during the process there are likely to be significant “prospective” costs: future costs that may be wholly or partially avoided depending on actions taken.

Turkish Declarations of Use
news

Turkish Declarations of Use

Have you recently validated your European patent in Turkey?  Did you know that in addition to paying annual renewal fees, Turkish law also requires you to submit a public declaration stating whether you have actively worked your invention in Turkey?

Managing your business-critical IP during the COVID-19 crisis
news

Managing your business-critical IP during the COVID-19 crisis

UK businesses are fighting for survival during the continuing COVID-19 outbreak and trying to trade under difficult conditions, the likes of which haven’t been seen in the living memory of most business people. If you’re afraid that your business is going to the wall, it probably isn’t the top of your mind to pay for a patent application for your new technology or a registration of the trade mark for your brand new clothing range, right?  Where is the money coming from to invest in such luxuries as IP, we hear you say, when staff are being furloughed and orders have been postponed?

Videoconferencing: the future of oral proceedings at the EPO?
news

Videoconferencing: the future of oral proceedings at the EPO?

The European Patent Office has announced that videoconferencing will become the norm for oral proceedings before examination and opposition divisions until at least 15 September 2021. But is this a taste of what the future holds for oral proceedings at the EPO?

aipex logo aipex logo aipex logo