In January 2016 and January and May of this year I wrote short pieces about the difficulties trade mark owners face in trying to secure, by way of a UK or EU registered trade mark, protection against a competitor copying the 'shape' of their goods.
I explained that registering the shape of a product as UK or EU trade mark, let alone subsequently successfully enforcing that registration against a third party infringer, is not an easy task. To illustrate the point, I discussed (then) recent cases, involving Nestlé's attempt to register the three dimensional shape of its famous four-fingered "KitKat" chocolate covered biscuit as both a UK and EU registered trade mark, omitting the words "KitKat" (which are embossed on each finger when the product is sold).
In summary, the shape was held not to be inherently distinctive (and thus registerable), in particular because the shape did not depart significantly from the norm or customs of the sector.
Further, despite Nestlé's survey evidence showing that a significant proportion of the relevant UK public recognised the 4 fingered shape as being a "KitKat", the English High Court and Court of Appeal ("CoA") held that the mark had not acquired distinctive character through use, because Nestlé had failed to prove that the shape had, through extensive use over many years, come to be seen and regarded by average UK consumers 'as a trade mark' (i.e. as indicating the commercial origin of a chocolate covered biscuit having that shape).
The CoA declared that it is not possible to register inherently non-distinctive shapes of goods as trade marks, unless those shapes are used 'as trade marks' and, as a consequence and because of such use, a significant proportion of the relevant public 'perceive' the goods in question as originating from a particular business. It is not enough for average consumers to recognise a shape and associate it with goods made by a particular business. They must perceive the shape as a 'badge of origin', such that they would rely upon it alone to identify the product as coming from a particular source (and not any other trade mark which may also be present on the goods, such as a logo or brand name).
The most recent chapter in the ongoing saga of trying to register and enforce 'shape of goods' trade marks in this country has just been written by the English Court of Appeal ("CoA"), in The London Taxi Corporation Limited v Frazer-Nash Research Limited & Anor case. Readers may recall that, in January 2016 I reported on the first instance decision of the High Court.
It asserted that the defendants were threatening to infringe them by marketing a new model of London taxi.
The High 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.
The CoA upheld the first instance decision, with Lord Justice Floyd declaring that, to be inherently distinctive (and thus registerable as a 'shape of goods' trade mark), a shape must depart significantly from the norm or customs of the sector - and that was not the case in respect of the particular taxi shapes in question.
However, he did concede it was certainly arguable that, if the claimant had been able to prove that the shape of the taxi departed significantly from the norm or customs of the sector, then that may well have sufficed in proving the mark was inherently distinctive and thus could be registered as a trade mark.
If this argument is correct, this would make it easier to register such marks in the future, as historically there has been a further requirement in the UK that the public must also see and regard the shape as denoting the trade origin of the goods. Unfortunately, his (helpful) comment was caveated by the further statement that he would have needed to refer this question to the Court of Justice of the EU, had he found the shape to be inherently distinctive - which he did not. So, we are still no wiser on the point.
So where does this leave us? In my opinion, the best chance that a brand owner has of getting a 'shape of goods' trade mark registration is to show that the shape departs significantly from the norm or customs of the sector. At least then you have a chance of getting a registration. If you cannot prove this, then you face the difficulty of being able to lead evidence proving that, as a result of extensive use and effort, you have educated a significant proportion of the relevant public to regard the shape as a 'badge of origin, telling them from whom the goods originate (as opposed to any other trade mark which may also be present on the goods, such as a logo or brand name). That is a very high hurdle to overcome - and most will fail.