Three-dimensional shape trademarks are the most commonly sought non-traditional registrations at the European Intellectual Property Office (EUIPO). These are examined to decide whether they have the necessary distinctive character to function as a trademark.
It is the EUIPO’s view that the public is generally not accustomed to looking to the shape of a product, or its packaging, to ascertain the origin of the products, and where shapes are not unusual, consumers may not perceive these shapes to be indication of origin.
At the EUIPO, shape marks are grouped into three categories:
- Those unrelated to the goods or services themselves.
- Shapes that consist of the shape of the goods themselves or part of those goods.
- The shape of packaging or containers.
As a general rule, when the shape of the product is unrelated to the goods or services themselves and is thus different from the commonly expected shape of such a product or service, it is likely to enable the consumer to recall this shape and to assist in any repeat purchase. As a result, such marks are inherently registerable.
The other types of shape marks are not normally found to be inherently distinctive and as such, proof of acquired distinctiveness will be required to secure registration.
Proving Acquired Distinctive Character
EUIPO sets out that distinctiveness must be proven for the part of the European Union (EU) in which the mark concerned does not have inherent distinctive character. While for word marks found not to be sufficiently distinctive for registration the applicant will only need to prove acquired distinctive character in countries where the meaning of a mark is understood, a non-traditional mark, when found to be lacking distinctiveness, will be non-distinctive throughout the EU.
If the mark is objected to during the examination stage, the applicant must provide evidence of acquired distinctiveness at the time the application was filed. If, however, an objection is raised during cancellation proceedings, the registration may be saved, if the mark has acquired distinctive character for the goods or services for which it is registered at some point after being accepted onto the register and before the application for cancellation.
Before filing an application to register a shape trademark which is not inherently distinctive, the applicant must consider whether it has educated its customers to recognise the shape as an indication of the origin of its product. Advertising campaigns can assist, particularly when instructing the customer to look out for the unique shape of the product to identify it, rather than the name of the product alone.
The timing of such an application should also be considered carefully. An applicant should come to the EUIPO prepared with as much evidence as possible. Even if such material is not available on the filing date, the relatively fast examination procedure at the EUIPO will mean that a full bundle of evidence of acquired distinctive character will be required only two to three months after filing the application.
Since Regulation (EU) 2017/1001 came into effect on 1 October 2017, it has become possible to first argue for inherent distinctiveness of a mark, withholding acquired distinctiveness as a subsidiary claim. This subsidiary claim can be made on the application form, or at the latest, in reply to the first objection to registration issued by the EUIPO. Such a claim cannot be introduced at the appeal stage.
Proving acquired distinctive character across the EU is no mean feat. Although the EUIPO will allow applicants to make some extrapolations from the provided evidence to draw broader conclusions about use of a mark, such inferences can only be made where the market is homogenous and where market conditions and consumer habits are comparable. Other factors—such as the size of the market, the market share, marketing expenditure, and the applicant’s main competitors—will also need to be comparable.
The decision of the General Court in Mondelez UK Holdings & Services Ltd (formerly Cadbury Holdings Ltd) v. Société des produits Nestlé SA1 regarding the ‘KitKat shape’ reinforces this position with the decision that even with evidence of around 50% recognition, based on evidence from Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland, Sweden and the UK, representing around 90% of the EU’s population, without coming to a conclusion regarding the perception of the mark by the relevant public in, inter alia, Belgium, Ireland, Greece and Portugal and without analysing the evidence adduced in respect of those member states, the requirement to show acquired distinctive character throughout the EU was not met. It was concluded that a lack of recognition of the mark as an indication of commercial origin in one part of the territory of the EU cannot be offset by a higher level of awareness in another part of the EU. This effectively means that the applicant will need to produce evidence of use and recognition in all EU member states.
Applicants should also be mindful that shapes or other characteristics of goods which are necessary to obtain a technical result or shapes giving substantial value to the goods are excluded from protection.
Although less frequent in number, an application for a trademark consisting exclusively of a single colour or a combination of colours requires a reproduction of the colour and a reference to a generally recognised colour code, such as Pantone, Hex, RAL, RGB or CMYK. Like 3D trademarks, it is usually necessary to prove acquired distinctive character before being granted a registration.
Single colour trademarks are registerable; however, due to the limited number of colours available the case for registration must be dictated by exceptional circumstances such as where the colour is unusual or striking in relation to the goods or services.
A combination of colours is also registerable at the EUIPO if the combination has the necessary distinctive character to enable the relevant consumer to identify the origin of the goods or services and is not merely decorative. As a general rule, the more colours included in the combination, the less likely it is to be found registrable.
Recently, some high-profile colour combination marks have been subject to cancellation. Despite having a high level of acquired distinctiveness due to customer recognition, Red Bull GmbH’s registrations for the combination of the colours blue and silver in respect to energy drinks,2 and Andreas Stihl AG & Co KG’s combination of the colours orange and grey, when applied to the housing of chainsaws,3 were cancelled at the EUIPO. During cancellation actions, the Second Board of Appeal at the EUIPO in the case of Andreas Stihl’s registration and the General Court (Second Chamber) in the case of Red Bull’s registration found the marks were not clear, precise, self-contained, easily accessible, intelligible, durable and objective, as required by the case law.4
Even despite both marks having been found to be sufficiently distinctive during examination, they were found lacking in the necessary precision to allow the consumer and competitors to understand exactly what combination of colours would be protected by the mark. Court of Justice of the European Union case law mandates that the colours are systematically arranged in a predetermined and uniform way.
Applicants for colour combination trademarks in the future should consider carefully the description of their applications, ensuring that as well as the precise shades of the colours concerned, their ratios and special arrangement are described in detail. This may not provide a broad scope of protection, perhaps not even broad enough to protect variations of the colour scheme on a diverse product line, but should provide the applicant with some comfort that their mark is registerable and will also withstand any challenge to its validity.
Other types of non-traditional marks also exist, but due to their infrequency in number, have undergone less scrutiny and judicial review. These include position marks, pattern marks, sound and motion, multimedia and hologram marks.
Position trademarks dictate the way that a mark is placed onto a product, and in order to be registerable, must be understood by the consumer as an indication of origin, rather than just a decorative element. For example, pocket stitching patterns regularly used in the clothing industry, can be found registerable as trademarks.
Pattern marks, which are comprised of a set of elements repeated regularly, may be registered and, while they may cover any type of goods or services, they are more typically registered in relation to fabrics and fashion items. Patterns that consist of basic or simple designs usually lack distinctiveness, although as with other types of non-traditional mark, evidence of acquired distinctiveness can result in the registration of such marks. For example, Louis Vuitton Malletier’s signature LV monogram design has been registered as a trademark.
Since 1 October 2017, and the removal of the requirement for a mark to be represented graphically with the more user-friendly ”… capable of… being represented on the Register of European Union trademarks (‘the Register’), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor” (Article 4(b) EUTMR), accurately representing a sound trademark has become much easier. Applicants may now submit a sound record in MP3 file to the EUIPO.
When applying to register a sound mark, once again, customer perception is a factor which must be considered. Without evidence of acquired distinctive character, short combinations of notes, or commonly known melodies may not be found to have the necessary distinctiveness to function as a trademark. Frequently used sounds, such as the start-up sounds for electrical devices, have been found registerable, for example sound combinations registered by Nokia based on Francisco Tárrega’s “Gran Vals.” The widespread distribution of such goods to markets globally will allow the trademark owners, when necessary, to provide evidence of acquired distinctiveness throughout all European countries.
A sound recording will no doubt provide a more precise and accessible record of the sound protected, but the level of precision may compromise the breadth of protection achieved. It is still acceptable to apply to register a sound mark using musical notation, and an application of this type may provide a broader scope of protection to the applicant.
Motion, Multimedia and Hologram Marks
Also benefiting from the changes in EU Procedure introduced on 1 October 2017, motion, multimedia and hologram marks can now be registered by providing a digital file such as a jpeg or MP4 file. These marks will meet the requirements for registrability provided they have the necessary distinctive character.
In conclusion, to have the best chance of protection of non-traditional marks, particularly those which are not very unusual compared to other signs in the same field, a comprehensive body of evidence of acquired distinctiveness should be available at the time of application, in order to allow the applicant to have a fighting chance of successfully registering its mark in the relatively short timeframe provided for examination by the EUIPO.