Recently there have been several well reported registration issues for recognisable shapes such as the Land Rover Defender 4x4, the Rubik’s Cube, the 4 fingered KitKat chocolate bar and the London black cab. These decisions show that registering a 3D trade mark is not a straightforward task, particularly when there is an element of functionality in the shape for which registration is sought. The EUIPO’s recent cancellation of the Rubik’s Cube mark and the UKIPO’s rejection of the Land Rover Series 1, Series 2 and Defender models are both good examples.
In 1996, Seven Towns Ltd filed a 3D trade mark application with the EUIPO for the Rubik’s Cube by reference to three black and white images, without any description of the mark. The mark was later registered in 1999. In 2006, Simba Toys (a German toy manufacturer) challenged the validity of the mark on several grounds, including that the sign consisted exclusively of the shape, or another characteristic, of goods which is necessary to obtain a technical result (a 'Technical Necessity'). Simba Toys’ action and several subsequent appeals were defeated. However, an appeal to the CJEU was eventually decided in Simba Toys’ favour, and the Rubik’s Mark was declared invalid.
The new owner of the mark, Rubik’s Brand, applied to the General Court for the declaration to be annulled. In making their decision, the General Court examined the ground of Technical Necessity in detail. It identified the mark’s essential characteristics as registered – the 'overall cube shape' and the 'black lines and little squares on each face of the cube' (bearing in mind the sign was depicted in black and white and there was no description) – and then assessed whether these essential characteristics performed a technical function.
The General Court held that both the cube shape and the black lines (denoting the axes of rotation) were both necessary for a Rubik’s Cube to operate as it should. It held that without the 'physical separation, the cube would be nothing more than a solid block in which none of the individual elements could move independently of the others'. As a result, Simba Toys’ Technical Necessity challenge was upheld and the mark was invalidated.
From April 2016 to August 2017, Jaguar Land Rover ('JLR') applied to register six UK trade marks consisting of 3D shapes of their vehicles in a variety of different classes of goods and services. The applications were opposed by Ineos Industries (who had previously successfully applied to invalidate a JLR registered design). Ineos cited, amongst other things, that the JLR marks lacked any distinctive character and were descriptive in nature, the JLR marks had a Technical Necessity and that the applications were filed in bad faith.
JLR successfully argued that none of the marks consisted exclusively of the shape necessary to achieve a technical result. The 'boxy ‘slab-sided’ shapes' were not a Technical Necessity (in fact they were counter functional by today’s automotive design standards) and there was a design element to the configuration of the elements making up the shapes.
Although the UKIPO recognised that there were some unusual aspects in the JLR marks (for example, the 'alpine side windows' on the Defender model), the shapes as a whole did not depart from the norms of a passenger car and therefore the JLR marks were devoid of distinctive character and had not acquired distinctiveness.
With regards to bad faith, the breadth of the goods and services for which JLR sought to register its marks was considered to be too broad. The UKIPO considered that there was a lack of a 'reasonable commercial rationale' for seeking to register the JLR marks in relation to apparatus for locomotion by air and/or water. The overall result was that the UKIPO refused JLR’s application except some limited goods and services in Classes 9, 14 and 28.
These decisions demonstrate just how difficult it is to register and maintain a trade mark for a 3D shape. Even for shapes that are considered by many to be iconic, there are many potential hurdles, leading to uncertainty for rights holders at the application stage and beyond.