How a product is shaped can often be a defining element of its branding. Although there can be often be some confusion around whether this is, in fact, registrable.

Shape marks of products are useful trade marks to have. They transcend language barriers and persist even after packaging has been removed, in the case of confectionery, right up to the moment the product is eaten. Trade mark registration is the one registration right in the array of intellectual property monopolies that can be maintained indefinitely. Trade mark registration of a product shape can be an exceptionally effective right.

This article looks at the types of product shapes that may be registered and considers, in particular, whether the functionality of a product’s shape should necessarily preclude it from functioning as a trade mark and being registered.

A recent ruling from the European Court of Justice in respect of a trade mark matter in the United Kingdom indicated that, at least within the European Union, where a product shape is fully functional, this may be a bar to the product shape ever being registered as a trade mark. This is not the position in Australia, where the shapes of products, including the one in issue before the United Kingdom courts, are among a number of registered shape marks.

The product at issue is the Kit Kat chocolate bar, in particular, its original line of four finger chocolate coated wafer biscuits. This is a notable example as this is a product where its shape predates its name. The product was launched in 1935 under the name ‘Rowntree’s Chocolate Crisp’. Only afterwards was the term Kit Kat applied. The shape of this product, however, has largely remained the same since its introduction to the market 80 years ago.

Back then it was not possible to register the shape of a product as a trade mark, even if it came to successfully perform the role of a good trade mark. By definition, trade marks did not extend to shapes. This changed some time ago with the introduction of the TRIPS Agreement (The Agreement on Trade-Related Aspects of Intellectual Property Rights).

Following this, the trade mark laws of signatory countries, including Australia and those of Europe, were amended to allow for a broader meaning of what should be considered registrable as a ‘trade mark’. In Australia, the definition of a registrable trade mark is open-ended and limited only by the imagination of marketers and the receptiveness of consumers. Shapes are just one of many kinds of signs that may function and be registered as a trade mark.

Some of the earliest shape marks to be registered in Australia are the product shapes of the Freddo Frog, Toblerone and Caramello Koala chocolates, as well as the Kit Kat chocolate bar. A requirement for registration is that a trade mark be distinctive. Some product shapes have been considered by the Australian Trade Marks Office to be so arbitrary that they were regarded as being inherently, or immediately, distinctive trade marks. Others have required evidence of use in the marketplace, sometimes over a considerable time, in order to show that the trade marks have acquired distinctiveness by building up a reputation with consumers. This was the case with the Kit Kat chocolate bar.

A major issue for consideration to the registration of the shape of the Kit Kat chocolate bar, both in Australia and overseas, has been the functionality of its shape. An important selling point for this product is its ability to have its constituent fingers broken apart and shared, which is identified in the product slogan, ‘Have a break, have a Kit Kat’. The shape of the product provides for a technical result, namely the breaking of the bar easily into parts through the grooves running along the length of the bar on its slab base.

In Europe, it appears that this function could preclude this product shape from being registered. The recent ruling provides that registration of a sign that consists exclusively of a shape necessary to obtain a technical result with regard to the manner in which a product functions must be precluded. The rationale for this position is to prevent trade mark protection from granting its proprietor a monopoly on technical solutions or functional characteristics of a product, which a user is likely to seek in the products of competitors or, more broadly, to prevent the exclusive and permanent right that a trade mark confers from serving to extend indefinitely the life of other rights in which the European Union legislature has sought to make subject to limited periods.

In Australia, the position is that regardless of the functionality of a product shape, if it also functions as a badge of origin so as to indicate that the product comes from a particular trade source, then it may be registered as a trade mark.

People multitask all the time, as can products. Just because a product’s shape functions to perform a particular utility, this does not mean that it cannot also function as a trade mark. If it is performing the job of a trade mark, this quality trumps all of its other functions and is the overriding determining factor as to whether or not a product shape is registrable.

Notwithstanding any functionality, if the purpose and nature of a product shape also serves to indicate the source of the product it is a registrable trade mark and registration may well be worth pursuing.