Out of shape

Although it is possible to register 3D shapes as trade marks, there are limitations on this, designed to prevent businesses obtaining a de facto permanent monopoly over the shape of their products. 

EU and UK trade marks legislation (Directive 2008/95/EC; Council Regulation (EC) 207/2009/EC; Trade Marks Act 1994, s 3) prevents the registration of marks which consist exclusively of:

• a shape which results from the nature of the goods themselves;
• a shape of goods which is necessary to obtain a technical result;
• a shape which gives substantial value to the goods.

In addition, shape trade marks must meet all the other requirements of registration. In particular, they must be distinctive. A trade mark may be inherently distinctive (i.e. distinctive from the outset of its life). Alternatively, it can acquire distinctiveness over time through use.

Recent cases have addressed whether the KitKat four-finger shape and the shape of a London taxi had acquired distinctiveness through use.

The KitKat case

In Société des Produits Nestlé v Cadbury UK [2014] EWHC 16 (Ch), Nestlé submitted a UK trade mark application for KitKat’s “four-finger shape”, arguing that it had acquired distinctiveness through 75 years of use. However, opposition by Cadbury was upheld by the UK Intellectual Property Office.

On appeal, Mr Justice Arnold referred three questions to the CJEU for a preliminary ruling. In its response (Case C-215/14), the CJEU confirmed that to show a shape mark has acquired distinctiveness, a significant proportion of consumers must “perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company”.

Applying the ruling, Mr Justice Arnold restated the test as follows: “In order to demonstrate that a sign has acquired distinctive character, the applicant or trade mark proprietor must prove that... a significant proportion of the relevant class of persons perceives the relevant goods or services as originating from a particular undertaking because of the sign in question (as opposed to any other trade mark which may also be present).”

He found that consumers did not use the four-finger shape on its own to identify the origin of the product. There was no evidence that the shape had featured in its advertising. The wrapper did not show the shape of the goods. There were other biscuits with the same shape on the market during the relevant period. Consumers would use other aspects of the branding (such as the “KitKat” name and logo on the packaging) to identify the goods. Thus, the shape had not acquired distinctiveness and could not be registered as a trade mark.

The London Taxi Company case

Mr Justice Arnold applied the restated CJEU test again in The London Taxi Corporation (t/a The London Taxi Company) v Frazer-Nash Ltd [2016] EWHC 52 (Ch).

LTC claimed trade mark infringement and passing off, in that the Metrocab (a new electric cab) had copied the shape of various models of its black cabs, which had been registered as trade marks. Metrocab’s manufacturer denied infringement, and counterclaimed for revocation.

The judge considered that LTC’s taxi shapes would have been perceived by the relevant public (taxi drivers) as merely a “variation of the typical shape of a taxi”. There was no evidence that they relied on the taxi shapes to denote their origin. He dismissed LTC’s claim, and held that the shape trade marks were invalidly registered as they:

• were devoid of distinctive character and had not acquired distinctiveness through use; and
• consisted exclusively of the shape which gave substantial value to the goods.

In addition, one mark was revoked for non-use.

Comment

These cases demonstrate that it will be very difficult for businesses to show that the shape of their product has acquired distinctive character through use.

Alternative forms of IP protection, such as designs, exist to protect product shapes. However, designs can be registered for a maximum of 25 years, as opposed to the unlimited protection trade marks can offer.

Other issues around shape trade marks remain undecided. In LTC, Mr Justice Arnold noted that one such is whether a shape would have to be “unusual” to have distinctive character from the outset. He considered that while this may be the case, an unusual shape would not be sufficient in itself to establish inherent distinctive character. The test for inherent distinctiveness will require future litigations.