It’s well known that product shapes can be registered as trade marks. The South African Trade Marks Act, for example, has a very wide definition of the term ‘mark’, and this includes words, colours, numbers, patterns, ornamentation and shape. Yet it’s also well known that product shape trade marks are difficult. For starters, there’s a specific exclusion regarding shapes that are necessary to obtain a technical result, or that result from the nature of the goods themselves – well known EU casualties of this exclusion have included the Philips three-headed shaver and the Lego block, both of which were deemed to be functional shapes. On top of that the EU authorities take the view that, even if the shape is arbitrary, product shape trade marks are different from more conventional types of trade marks like words and logos, because consumer perception is different.

What the EU authorities are saying is that, although trade marks are all about indicating origin, the average consumer is not in the habit of making assumptions about the origin of the product based on its shape.  In other words, the consumer generally doesn’t use the shape of a product to conclude that it has been manufactured by one company rather than another. As a result, a product shape can only be registered as a trade mark if it ‘departs significantly from the norm’. This makes the entry level for product shapes considerably higher. 

There have been a number of product shape cases in the EU. One that attracted a great deal of public interest was the case where Europe’s highest court declared that a registration for the Lindt sitting bunny – complete with gold foil, red ribbon and bell – failed to pass muster because it was commonplace in the industry, especially around Easter-time. More recently we’ve had the courts extending this line of thinking to 2D-representations of product shapes, as well as to shapes that simply form part of the product. In the recent case of Louis Vuitton v Friis, the court held that a trade mark comprising a 2D-representation of a locking device used for jewellery and other luxury goods had to be judged on the same basis as product shape trade marks, which meant that the application had to fail because it didn’t depart significantly from the norm. 

There have been far fewer cases in South Africa, but our courts haven’t really shown much enthusiasm for product shapes trade marks – in a famous case the Supreme Court of Appeal refused registration of the Grunberger wine bottle shape on the basis that consumers don’t see shape as an indicator of origin. Two more recent cases may, however, suggest a slight shift in thinking. In the case of Nestle v Iffco, the Gauteng court upheld registrations belonging to Nestle for the four-bar shape of Kit Kat chocolate, holding that the shape did not achieve a technical result. The other was the decision of the Supreme Court of Appeal in the case of Adidas v Pepkor, where the court held that the Adidas three -stripe trade mark registration had been infringed by use a four-stripe motif on shoes, rejecting the defence that stripes on shoes are simply used and seen as decoration or embellishment rather than as indicating origin. Whether or not South African courts will require a significant departure from the norm in order for product shapes to be registered as trade marks remains to be seen.

A further recent EU decision however reminds us that in certain cases product shapes are possibly best dealt with by way of design law. The Karen Millen case, which  dealt with the copying of fashion designs, was brought under the so-called ‘Unregistered Community Design’, a system that gives automatic (unregistered) protection from copying to designs that are new  and that have an ‘individual character’ for a period of three years from the date of first marketing. As there’s no cost involved in getting protection, this system is perfect for industries like fashion, where designs tend to have a short life-span.

Although we don’t have an unregistered design right in South Africa, we do, of course, have a system of registered designs. It’s a system that should perhaps be used more than it is for product shapes. In South Africa, it’s possible to get a registration for an Aesthetic Design, which is one that is ‘judged solely by the eye’. It’s also possible to get a registration for a Functional Design, which is one where the design is ‘necessitated by the function’ that the product is to perform. The protection is fairly generous – 15 years in the case of an Aesthetic Design and 10 years in the case of a Functional Design.

Distinctiveness isn’t an issue that’s considered in respect of designs, nor is consumer perception. What is required, however, is that the design  must be new – it’s worth noting that, although lack of novelty won’t be picked up in the application process because there’s no substantive examination in South Africa, it may well come up if there’s ever litigation involving the registration, in which case the registration could be cancelled.  Once you have your registration you have the exclusive right to make or sell products featuring that design – no likelihood of confusion is required.

In some cases your best bet may be to get a design registration for your product shape when it’s first created, and to follow this up with a trade mark registration years later when it has acquired distinctiveness as a badge of origin for the product.