Shaping up to stand out

11th August 2020

Two interesting trade mark cases recently have highlighted the importance of the notoriously tricky-to-register ‘shape’ mark.

A 3D shape cannot be registered as a trade mark, if the shape:

  • Arises from the inherent nature of the object/goods
  • Provides a technical function
  • Adds substantial value to the product.

As you can imagine, proving that the shape you’re trying to register does not do these things can be very difficult!

Trade marks must also be distinctive enough to allow consumers to identify the mark as belonging to a particular trader and distinguish it from that of other traders.

Ritter Sport

Many will instantly recall the shape of Ritter Sport chocolate bars. These square, pocket-sized bars have been the subject of a dispute that started in 2010.

Ritter own a German shape trade mark for their chocolate bars and Milka chocolate, owned by Mondelēz, had challenged Ritter’s right to a monopoly right in this shape and had sought to cancel Ritter’s mark at the German Federal Court.

Initially Milka were successful, with the court deciding that the shape was functional. However, this decision was revisited and this time it was held that the shape of the chocolate bar does not confer any significant value as an essential feature of the chocolate. Instead, the main feature of the shape of the chocolate bar is to indicate where the chocolate has come from (a badge of origin). Consequently Milka’s victory has been overturned.

Jaguar Land Rover (JLR)

JLR had sought to trade mark the shape of its Defender SUV, but the UK Intellectual Property Office (IPO) considered that the shape of the vehicle was not distinctive enough (as far as 4×4 vehicles are concerned).  JLR appealed this decision, but this has been dismissed, with the judge agreeing with the IPO that whilst differences in the design may be noticed by specialists, it is unlikely the average consumer would notice them.

Both these decisions certainly highlight how important it is to create a brand that is recognisable and that stands out from your competitors. They are also a reminder of the importance of protecting this brand appropriately.

For advice on this and other trade mark issues, or for more information, please contact Emma Kirkpatrick on 01905 744 992 or at [email protected]

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