Shape Marks & Technical Necessity

Products of distinctive shapes may be granted protection under the Trademark law. The shape of the Coca-Cola bottle, the Weber barbecue, and the shape of the Toblerone chocolate bar or Hershey’s Kisses are all stellar examples of shape or 3-dimensional trademarks. However, in order to gain trademark protection, the shape must not be wholly designed to serve a technical purpose and it should in fact appear to be distinctive apart from the technical functions that it serves. Trademark rights related to shapes may have a negative impact on competition and therefore shape marks often raise market concerns. Various jurisdictions seem to be wary of such non-conventional trademarks and have stipulated additional requirements for such registrations.

European Union and The United Kingdom

The EU Trademark Directive[1] (the “EUTMD”) recognizes that shapes are capable of trademark registration, however, the shape must not be borne out of the nature of the product or be formed out of technical necessity. Article 4(1)(e) of this Directive states that a sign which consists exclusively of “(i) the shape, or another characteristic, which results from the nature of the goods themselves; (ii) the shape, or another characteristic, of goods which is necessary to obtain a technical result; (iii) the shape, or another characteristic, which gives substantial value to the goods;” shall not be registered as a trademark.

The European Trademark Offices have now agreed on a common decision-making practice[2] for assessing the distinctiveness of 3D marks/shape marks with elements, which came into force on 1 April 2020.[3] The Common Practice report also states the elements required for registration of a shape mark and reiterates Article 4(1)(e) of the EUTMD.

In a recent case[4], the Swiss Federal Court confirmed cancellation of the shape mark for Nespresso capsules, Nestle’s ground coffee, compatible with the Nespresso coffee machine. It was observed that it is impossible to register a technically necessary shape, even if the product had established itself well within the market. It is interesting to note that Nestle had in fact registered the shape of the Nespresso capsules as a Swiss trademark in 2000 and then gained international protection via the Madrid System, including in EU member countries.[5] However, the EUIPO refused to register the trademark as a shape mark in 2002 holding that the mark had not acquired distinctive character. Nonetheless, the shape mark gained protection in Germany in April 2003 until the German Patent and Trademark Office (DPMA) cancelled its trademark protection in 2014. In the present case, the Ethical Coffee Company had filed for cancellation of the Nespresso capsules trademark on grounds that the shape was technically necessary when using the Nespresso system. Cancelling its registration, the Court also observed that a “perpetual monopoly through trademark law” should be avoided in such cases.

In another case related to shape marks, the French cosmetics brand Guerlain recently[6] successfully gained trademark protection for the shape of its rouge lipstick shape in the European Union. However, it is pertinent to note that in the first instance, the shape was rejected trademark protection and the decision was reversed by the Court of Justice of the European Union. The EUIPO had initially found that the shape lacked distinctiveness and the shape was in fact a variant of the usual shape in which the product is available. In its appeal, Guerlain claimed that the lipstick has a “revolutionary” shape and distinctive features that set it apart from other lipstick brands. To summarize, it stated that the lipstick cannot stand upright or vertically and that it resembles a boat with round edges and a convex upper part with a double mirror on the rectangular hinge and embossed oval shape on the case. The Court found that the shape of the lipstick was unique and stood apart from other brands because it could not be put down and the standard shape in the industry is cylindrical or rectangular. The Court held that, “shape at issue is uncommon for a lipstick and differs from any other shape existing on the market.”

It is also worth noting that in 2017, the United Kingdom’s Court of Appeals refused to grant trademark protection to the shape of the famous London taxi because the Court held that the shape of the taxi was not distinctive in the car sector. In another famous case[7] related to shape marks, the Court of Appeals rejected trademark protection to Nestle’s Kit Kat chocolates on the basis of its shape. The Court found that the shape was borne out of the nature and shape of the mould of the chocolate bars. It was also determined that the shape was necessary to obtain two technical results, namely the breaking of the bars and determination of portion size. [8] The European Court of Justice upheld this decision and refused to grant protection to the shape of the Kit Kat chocolate, holding that the shape was not distinctive enough.

United States of America

U.S. Code § 1127, section 45 of the Lanham Act states that any word, name, symbol or device or any combination thereof, used in commerce to identify and distinguish products and to indicate source can be defined as a trademark. Therefore, the position in the United States is also similar where it can be observed that a mark is capable of registration and protection if it is distinctive and not wholly functional. The Lanham Act does not define a “functional mark” but this interpretation is left to the judiciary. Perhaps utilitarian functionality as well as aesthetic functionality are factors to be considered. Accordingly, the functionality doctrine serves as a buffer between trademark and patent law by precluding businesses from monopolizing a useful product feature under the façade of identifying the feature as the source of the product.[9]

India

In India, a mark capable of graphic representation and able to distinguish the goods and services of one entity from another may be registered as a trademark, under section 2 of the Trade Marks Act 1999 (the “Act”). Section 2(1)(m) of the Act defines “mark” to include the shape of goods, packaging and colour marks. Therefore, shape marks may fall under this definition and are per se capable of being registered as trademarks as well. However, the shape must be distinctive and must also meet the additional requirements laid down in section 9(3) of the Act which states that, “A mark shall not be registered as a trade mark if it consists exclusively of—

(a) the shape of goods which results from the nature of the goods themselves; or

(b) the shape of goods which is necessary to obtain a technical result; or

(c) the shape which gives substantial value to the goods…”

From the above statutory provisions, it can be concluded that the shape of the product should not be wholly functional in nature because if the case is so, the registration may be declined. Perhaps the reason behind this requirement is to deter manufacturers and industry players from creating a monopoly over their shapes (which may be functional in nature) and to maintain healthy competition in the market.

The Indian judiciary recognizes the shape of a product as a source indicator. For instance, in the case of Gorbatschow Wodka Kg v. John Distilleries Limited[10], the Mumbai High Court recognised the shape of the Plaintiff’s bottle as a trademark, which the Plaintiff had claimed was distinctive and part of their goodwill and reputation. The Court stated, “Under the Trade Marks Act, 1999, the shape of goods is now statutorily recognized as being a constituent element of a trade mark… A manufacturer who markets a product may assert the distinctive nature of the goods sold in terms of the unique shape through which the goods are offered for sale.” The Court also stated that, “The shape of the bottle which the Plaintiff has adopted has no functional relationship with the nature of the product or the quality required of the container in which Vodka has to be sold. The shape, to use the language of a leading authority on the subject, is capricious. It is capricious in the sense that it is novel and originated in the ingenuity and imagination of the Plaintiff.”

Similarly, in the case of Zippo Manufacturing Company v. Anil Moolchandani and Ors.[11], the Delhi High Court had restrained the Defendants from using the identical shape as that of the Plaintiff’s product, their ZIPPO lighter. Moreover, in the case of Seven Towns Ltd & Anr v. M/S Kiddiland & Anr.[12] The Delhi High Court also upheld the Plaintiff’s rights in the shape of the Rubik’s cube and granted an injunction in favour of the Plaintiff restraining the Defendant from adopting a similar shape, recognising the shape as part of the Plaintiff’s trade dress.

It is also pertinent to note that 3-dimensional marks include the shape as well as packaging of a product. For instance, in the case of Ferrero Rocher v. Ruchi International[13], the Delhi High Court granted damages in favour of the Plaintiff, ensuring protection of the Plaintiff’s trade dress. This case ensured that Ferrero Rocher could claim trademark protection over its packaging, a 3-dimensional mark.

Conclusion

In addition to the essential requirements for trademark registration, shape marks must also be unique and distinctive in the sense that they do not serve a wholly technical purpose. Trademark owners must be wary of this factor before applying for trademark registration of the shape of their products. This requirement of technical functionality seems to be a prevalent factor in various jurisdictions across the world.

The standards are higher in the European Union and it is not easy to gain trademark protection for a shape because the EUIPO seems to have a stricter registration practice. That being said, in some cases, if the shape is unusual and the product is significantly distinctive from its counterparts and it meets all the criteria for a shape trademark to be registered, it can be granted appropriate protection.

For any queries, please feel free to reach out to Ms. Vrinda Sehgal at vrinda@iprattorneys.com.

[1] Directive (EU) No. 2015/2436 https://wipolex.wipo.int/en/text/395032 [2] https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/News/cp9/CP9_en.pdf [3] https://legal-patent.com/trademark-law/distinctiveness-of-3d-marks-shape-marks-with-additional-elements/ [4] 4A_61/2021 of 7 September 2021 [5] https://legal-patent.com/trademark-law/swiss-mark-nespresso-capsules-deleted/ [6] Case T-488/20 [7] Societe Des Produits Nestle SA and Another v. International Foodstuffs Co. and Others (100/2014), (2014 ZASCA 187); (2015 1 All SA 492 (SCA) (27 November 2014) [8]https://www.pinsentmasons.com/out-law/news/shapes-must-be-distinctive-in-their-own-right-to-qualify-for-trade-mark-protection-says-eu-legal-advisor [9] https://www.iam-media.com/non-traditional-trademarks-through-lens-uspto [10] Gorbatschow Wodka Kg v. John Distilleries Limited https://indiankanoon.org/doc/792062/ [11] Zippo Manufacturing Company v. Anil Moolchandani and Ors. 2011(48) PTC390 (Del) [12] Seven Towns v. Kiddland, I.A. No.13750/2010 in CS(OS) No.2101/2010 [13] Ferrero Spa v. M/s Ruchi International (CS(COMM) 76/2018), Delhi High Court