A 3D trade mark in relation to a new unique product idea could in theory have been a way to achieve a monopoly on the market. However, while the Community Trade Mark Regulation allows companies to register the shape of their goods and packaging, there are certain safeguards which e.g. prevent companies obtaining a monopoly on technical solutions or functional characteristics of their products.

A key registration requirement, which is often the main obstacle to registration of trade marks for packaging is distinctiveness – signs have to identify the commercial origin of products or services. According to the case law of the Court of Justice of the EU (CJEU), consumers are not used to distinguishing goods by the shape of the product or its packaging, but from the signs affixed thereto. Nonetheless, through long-lasting sales success, or persistent commercial efforts from the market operators, consumers may be educated to perceive a certain product/packaging shape on its own as associated with a single undertaking. If that happens, then the shape has acquired distinctive character. A famous example is the Coca-Cola bottle.

Additionally, signs consisting exclusively of shapes resulting from the goods’ nature, necessity to obtain a technical result (even if an alternative shape could be used to achieve the same result), or shapes giving substantial value to the goods, cannot be registered.

Aleksandra Baczykowska (Bird & Bird Poland) and Fidel Porcuna (Bird & Bird Spain) take a look at two recent cases regarding shape trade marks, one concerning the shape of packaging and one concerning the shape of a product itself.

Blank packaging – Danone’s yoghurt pot in Poland

Compagnie Gervais Danone (DANONE) sought international trade mark registration IR.700040 for blank bicapsular yoghurt packaging for goods in classes 29 and 30, including yoghurts and flakes.

The Polish Patent Office (the PPO) initially accepted the international registration with respect to Poland but changed its standpoint following a revocation application filed by BAKOMA S.A. (the key competitor). The PPO found that DANONE’s packaging lacks distinctiveness. The packaging indicates to customers that there are two separate products – yoghurt and flakes. The pot with flakes is large enough to place a spoon inside yet small enough to be snapped and thereby add flakes directly to the yoghurt. Separating the products prolongs product life and allows the consumer to control the amount of flakes in the yoghurt.

This marketing tool was also found to be a technical feature. Product type determines the pot’s colour scheme: flakes are easily seen in transparent pots and dairy products are packaged in white plastic. Adopting CJEU case law, the PPO’s position is that only a sign that significantly departs from the standards and norms in a particular commercial sector and can distinguish the product origin is considered distinctive.

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The PPO also established that, on the market, DANONE used its yoghurt packaging with word-graphic elements rather than blank. These elements were found to be a dominant part of the packaging conferring its distinctiveness. DANONE’s appeal to the Regional Administrative Court in Warsaw was dismissed.

This practice confirming previous European case law (Henkel KgaA C-218/01, Philips case C-299/99, Lego Juris vs. OHIM C-48/09 and Giorgis v. OHIM) was recently followed by the General Court rejecting an application to register the shape of two packaged goblets as a 3D trade mark in the Giorgis v. OHIM case (T 474/12). This confirms that in the EU a monopoly for blank product packaging is hard to achieve, at least via trade mark registration.

Product shapes – The “Tripp Trapp” case in the CJEU

The scope of the provision prohibiting registration of a shape which results from the nature of the goods themselves was recently the subject of a preliminary ruling from the CJEU in the “Tripp Trapp” case (C-205/13).

In that case, the Court considered the validity of a trade mark covering the shape of Stokke’s highly praised “Tripp Trapp” children’s chairs, in the context of a trade mark infringement action initiated by Stokke and its licensees.

In particular, the referring court of the Netherlands asked (among other things) whether the “nature of the goods” prohibition referred only to the characteristics of the shape that are indispensable to the function of the goods, or also to shapes with functional characteristics that consumers might be looking for in the products of competitors.

The CJEU recalled that the main aim of the provision was to prevent technical functions from being monopolised through trade mark registration. The first step was to determine the essential characteristics of the shape, either by assessing the shape as a whole or by examining each essential characteristic in turn. If those essential characteristics were inherent to the generic function or functions of such goods, then the shape should fall within the prohibition from protection. To rule otherwise would render the prohibition applicable only to products which could be made in no other shape (because there is no substitute or due to regulation). To rule otherwise would also impede the ability of traders to make goods in the right shape to suit their purposes, according to the Court. On the other hand, if a decorative or imaginative element plays an integral or crucial role in the shape, then the shape is unlikely to be prohibited.

In summary, the CJEU has sent a reminder of the essential nature of the prohibitions against registering certain types of shapes as trade marks (which is equally relevant for other non-traditional marks): that trade mark registration is not a tool for creating unjust monopolies.