What are 3D marks?
Registration requirements of 3D marks
Peruvian case law
3D marks are little known and seldom used or applied for, not only in Peru but also across the world. This may be because in order to be registered, they need to meet several requirements, which means that parties have less incentive to apply for them. This article looks at what 3D marks are and their registration requirements in Peru.
"3D marks" are 3D forms – for example, products, packaging or wrappings – that can be distinguished from those of competitors in the market. Article 134(f) of Decision 486 of the Andean Community states that 3D marks (ie, the shape of products, containers or wrappings) can constitute trademarks, as well as words, images and sounds.
In doctrine, all signs that constitute a 3D mark are registrable. A definition that is commonly cited by the Court of Justice of the Andean Community and in the resolutions of the Specialised Chamber on Intellectual Property of the National Institute for the Defence of Competition and Protection of Intellectual Property (Indecopi) states that 3D marks are "constituted by particular forms of the containers, recipients, packaging, or other arrangement of the products or by their shape".(1)
Based on this definition, Hershey's Kisses chocolates are a clear example of a 3D mark. The product has a particular, special and distinctive shape – a kind of chocolate drop or tear – that no other product of this genre possesses. This 3D mark is registered in several countries.
Another definition of a 3D mark is as follows:
[I]n general, the National and Andean Doctrine and Jurisprudence define the three-dimensional mark as that mark constituted by the particular or arbitrary form of the product or its packaging; it is understood that it is a body with volume, which as such, occupies the three dimensions of space: height, width and depth.(2)
As can be seen, these definitions mention the shape of the products or their packaging, but they do not mention other forms that can also become 3D marks. The above definition may be considered biased, since it does not include, for example:
- 3D shapes that distinguish products, but which are not the shape thereof; or
- 3D shapes that distinguish services.
In this sense, a broader definition to describe the 3D marks is as follows:
[A] three-dimensional form that serves to identify and differentiate products or services from their similar in the market. It may consist of particular forms of the products, their containers, wrappings, packages or recipients in general; in three-dimensional forms that distinguish products, but that do not consist in the form thereof, or in three-dimensional forms apt to distinguish services from their similar in the market.(3)
Registration requirements of 3D marks
3D marks, as with any other distinctive sign, must comply with the condition of being distinctive in order to be registrable in Peru. It is clear that signs lacking distinctiveness cannot access registration.
However, in addition to this condition, 3D marks must meet other requirements in order to be registrable in Peru:
- They should not consist exclusively of the usual forms of products or their packaging.
- They should not consist of forms or characteristics imposed by the nature or function of the product or service in question.
- They should not consist exclusively of forms or elements that provide a functional or technical advantage to the product or service to which they apply.
Allowing the registration of marks that consist exclusively of the types of form listed above would create a market access barrier for competitors that wish to use such forms to distinguish their products or services.
There are also relative prohibitions for the registration of 3D marks – namely, that they should not be confusingly similar to other distinctive signs registered or previously applied for.
In the following cases, the applied-for signs were rejected for not fulfilling the requirements established by law.
In one case, the sign (Figure 1) was rejected for a lack of distinctiveness and for constituting a usual form of the products it sought to distinguish. Crocs, Inc of Peru applied for the mark in 2012 to distinguish "clothing, footwear, headwear" in class 25 of the International Classification.
Figure 1: Crocs mark
The Directorate of Distinctive Signs denied the registration of the applied-for sign ex officio due to its lack of distinctiveness.(4) It was determined that the 3D form of the applied-for sign did not show any particularities that would allow it to be associated with a specific business origin, nor did it show further denominative or figurative elements that could grant it distinctiveness.
Crocs, Inc appealed, stating, among other things, that:
- The applied-for sign showed unique characteristics in its configuration that allowed it to fulfill its identifying function in relation to the products intended to be distinguished.
- The 3D footwear form showed a particular configuration in which the upper part constituted a single piece that covered the instep and which contained a support strap and no heel. The upper part of the shoe had a broad shape that decreased slightly in proportion until it formed the tip of the inner side of the shoe.
The Indecopi Specialised Chamber on Intellectual Property confirmed the first-instance decision, indicating that in the market of products in class 25 – specifically, those that constituted footwear – there were 3D forms that resembled the applied-for sign.(5) In other words, similar footwear forms were common and usual in the market, and as the form was common, it was not registrable.
The decision highlighted that the shape and/or form of footwear constitutes a weak sign in relation to such products. Therefore, the coexistence of signs of that have the same form and/or shape, or a similar form or shape, should be allowed, provided that they have differentiating elements.
Additionally, the Chamber noted that the sole in the applied-for sign had a simple shape without characteristic details that would allow it to be associated with a specific business origin. It lacked its own elements that would provide it with sufficient distinctiveness.
In another case, the sign (Figure 2) was rejected not only for lack of distinctiveness, but also for providing a functional or technical advantage to the products it sought to distinguish.
Figure 2: Chemmer mark
The mark was applied for by Chemmer Enterprise Co, Ltd of Taiwan to distinguish "adhesives for use in industry" in class 1 of the International Classification.
This sign was rejected by the Directorate of Distinctive Signs on the grounds that the applied-for sign was not capable of being the means to distinguish the relevant products from others offered in the market.(6)
The Indecopi Specialised Chamber on Intellectual Property confirmed the first-instance decision, stating the following:
In this regard, the applied for sign consist of an adhesive applicator cap that shows determined characteristics, which are not sufficient for the consumer to identify a specific business origin. Likewise, the three-dimensional figure that forms the applied for sign has on the side protruding edges (like fins) that will facilitate the opening of the products that it pretends to distinguish (adhesives for use in industry), which constitutes a functional or technical characteristic thereof.(7)
The Chamber thus concluded that the applied-for 3D form was prohibited under article 135(b) and 135(d) of Decision 486. Therefore, it would be inappropriate to grant its registration.
The condition that 3D forms should not consist exclusively of forms or elements that provide a functional or technical advantage to the product or service to which they are applied prevents only their registration as a trademark, which would lead to unlimited protection over time. Such forms could be registered as invention patents or utility models, the protection of which is rather limited.
It is a difficult task for any applicant to obtain the registration of a 3D form as a trademark in Peru, since they must comply with the requirements set out in this article. There are many cases in which the registration of such signs has been denied due to a lack of distinctiveness.
It may seem that Peruvian trademark examiners have strict criteria. However, similar provisions exist elsewhere in the world.
For further information on this topic please contact Marietta Flores at OMC Abogados & Consultores by telephone (+51 1 628 1238) or email ([email protected]). The OMC Abogados & Consultores website can be accessed at omcabogados.com.pe.
(1) Fernández Novoa, Fundamentos de Derecho de Marcas, Madrid, 1984.
(2) Cornejo Guerrero, Carlos A, La marca tridimensional.
(4) Resolution No. 5115-2013/CSD-INDECOPI.
(5) Resolution No. 0192-2014 /TPI-INDECOPI from file No. 504314-2012/DSD.
(6) Resolution No. 2268-2015/CSD-INDECOPI.
(7) Resolution No. 3112-2016/TPI-INDECOPI from file No. 529019-2013/DSD.