Trade Marks - What shape are we in?

It’s a new year. Many of us overindulged during the holiday season (and thus some of us are not in the best shape we could be). So we head to the gym (well, some of us do), with the best intentions of getting fit, looking after our health and getting nice and trim for the spring and summer to come.

Trade mark owners also like to look after their figures (generally profit lines) - and that can often mean making sure they secure, by way of registered trade marks, protection against competitors copying the ''shapes'' of their goods and associated packaging.

The problem is that registering the shapes of products as trade marks, let alone subsequently successfully enforcing those registrations against third party infringers, is not an easy task in this country.

Two recent cases in this country highlight the problems that trade mark owners face.

In the first case, Nestlé attempted to register the three dimensional shape of their famous four-fingered "KitKat" chocolate bar as a UK registered trade mark, omitting the words "KitKat" (which are embossed on each finger when the product is sold). See below:

Nestlé accepted that the shape was not ''inherently distinctive'' (i.e. average consumers of the goods in question were not in the habit of making assumptions about the trade origin of such goods simply on the basis of their shape, in the absence of a logo mark or word mark, for example "KitKat"), but argued that the shape had ''acquired distinctive character'' (i.e. through use, average consumers had come to see the shape ''as a trade mark'').

Following a reference to the Court of Justice of the European Union, the English Court held that in order for the shape to have ''acquired distinctive character'' Nestlé had to prove that, at the date it filed the UK trade mark application, a significant proportion of average consumers of chocolate perceived the goods as originating from a particular business because of the shape of the goods (as opposed to any other trade mark which might also be present; for example the name "KitKat", or the "KitKat" logo).

Despite the fact that survey evidence showed that a significant proportion of the relevant public recognised the 4 fingered shape as being a "KitKat", the Court held that Nestlé had failed to prove its case. It had only proved that they recognised the shape and associated it with KitKat products. They had not proven that such persons would rely upon the shape as denoting the origin of the goods, if it were used on its own.

In the second case, the claimant owned registered trade marks for the shape of certain models of London taxi. 

It asserted that the defendants were threatening to infringe them by marketing a new model of London taxi.

The Court held that the trade marks were invalid and should never have been registered. They were not inherently distinctive and had not acquired distinctive character through use. The claimant had not taken any steps to educate the public that the shape of their taxis denoted the trade origin of those taxis. The relevant public did not identify the trade source of the claimant's taxis because of the shape of them. Instead, they would look for badges on the front and rear of the vehicles, designating the make and model of taxi.  

So, all in all, not exactly a ''good news story'' for ''shape'' brand owners. So what should they do now?

May I suggest that they do the following?:

• Adopt and use ''shapes'' for goods that depart significantly from the norm or customs of the sector of goods concerned - they are more likely to be deemed ''inherently'' distinctive and thus prima facie registerable.
• Promote the shape of their goods as identifying the trade source of the goods (e.g. in the case of a KitKat, perhaps running an advertising campaign using an advertising slogan like "Your 4 fingered friend" next to the image of a 4 fingered KitKat chocolate bar, but without any reference to the name "KitKat", nor any use of the logo mark). By educating consumers to perceive the goods as originating from a particular business because of the shape and appearance of the goods (and not any other trade mark which might also be present, for example the name "KitKat", or the "KitKat" logo), the same may well ''become'' a trade mark and thus should be capable of registration.
• Having done that, they will still need to obtain evidence that, as a result of their efforts, average consumers have indeed come to see the shape of the goods as indicating the trade source of the goods - not an easy task. Survey questions will need to be carefully drafted, so that they are not struck out for ''leading'' the witness. They will need to prove that such persons would rely upon the shape as denoting the origin of the goods if it were used on its own. 
• Look to register the shape of goods as registered designs (not always possible, for reasons too long for this note, but worth considering and, in the right case, actioning).
• Do whatever they can to prevent other traders starting to use similar shapes for the same types of goods, so as not to dilute the uniqueness of their ''shape'' trade mark - not easy if you don't have any registered trade marks or designs to rely upon, but threats of ''passing-off'' might be an option in some cases. 
• Chose to register shape marks as Community trade marks, rather than UK trade marks, as OHIM generally is more lenient is registering such marks (albeit, you may still face the problem of subsequently having to enforce the trade mark before an English Court, which may declare it invalid).

To conclude, some might say that the English Courts are now neglecting IP protection for ''shapes'' in the same way that many of us neglect our own ''shapes'' (or should that be ''figures'') during the bleak winter months of the northern hemisphere.

Better get off to that gym….