The shape of things to come

Design engineers are responsible for creating innovative and revolutionary products. If they have any knowledge of intellectual property, this is likely to have centred around patents and designs: after all, if a product performs an inventive function and/or has a novel aesthetic appearance, it may be possible to obtain monopoly rights by means of either a patent or design registration. Both rights provide valuable protection for a substantial period of time (usually 20 years for patents; up to 25 years for designs). What many design engineers may not appreciate is that it is also possible to protect 3-dimensional shapes as trade marks; and trade mark registrations can potentially last forever. It has been possible to register shapes as trademarks within the UK and EU for nearly 20 years, though it can be a difficult endeavour. All registered marks must be distinctive of the goods/services in relation to which they have been registered – i.e. capable of distinguishing them from those of third parties. For shape marks there are additional requirements, to prevent products being the subject of a perpetual monopoly when their patent/design protection has expired. Any mark which consists exclusively of a shape required to obtain a technical result may not be registered (patents should be used instead – the fact that the well-known shape of a LEGO brick had previously been protected by patents assisted the highest Court in Europe in invalidating a trade mark registration for the shape); and any mark consisting exclusively of a shape which gives substantial value to goods will also be excluded (if it's aesthetically pleasing to look at, use design protection instead). Assuming that a design engineer's new product creation does not fall into such excluded categories, it may be possible to obtain registered trade mark protection in the form of a 3-dimensional shape mark. As noted above, all registered marks must be distinctive of the owner, capable of distinguishing its goods/services from those of competitors and acting as an indication of trade origin. Traditionally, European Courts have taken some convincing that consumers are able to identify shapes as origin indicators. The owner of a shape mark must usually prove that he has used the mark to such an extent that it has become distinctive of his goods/services. An important element of this is that the shape in question must generally depart significantly from the norm or customs of the relevant industry sector. Hence the owners of the well-known brand of torch MAGLITE were unable to register the shape of their product as a trade mark because – as recognisable as MAGLITE torches may be – their shape is essentially a cylinder with a bulbous end, much like any other torch. Ultimately, members of the relevant public at whom the product is directed, must – without analytical examination – immediately and with certainty distinguish goods of the shape in question from those of another commercial origin. Although this can be a difficult hurdle to overcome (and substantial evidence of use as a trade mark is usually required), it is far from impossible, and the reward of a potentially ever-lasting monopoly right is likely in many instances to outweigh the costs that may be involved. One of the better-known shape marks accepted for registration is the distinctive front grille depicted below, owned by Daimler Chrysler and used in relation to its JEEP brand of vehicle. The relevant Court held that grilles have become an essential part of the appearance of vehicles and a means for consumers to differentiate between models. Although grilles perform a technical function, they can also distinguish vehicles as trademarks – the JEEP grille was deemed to be an unusual design and not commonplace at the date of application, and was therefore accepted for registration. A less well-known shape mark that has been accepted for registration is the following, registered for pipe junctions, fittings and couplings. The owner was able to convince the relevant authorities that this shape was sufficiently distinctive to operate as a trademark, indicating commercial origin – and has been granted a potentially perpetual monopoly for the shape across the the EU. The take-home message? If you design a product that has a distinctive shape, be sure to speak to a trade mark specialist to see if it may also benefit from protection as a registered mark. For more information, please contact Matthew Dick, Partner, on: Tel: 020 7269 Email: mjd@dyoung.com