Colors answer feeling in man; shapes answer thought; and motion answers will.
An image is not simply a trademark, a design, a slogan or an easily remembered picture. It is a studiously crafted personality profile of an individual, institution, corporation, product or service.
Daniel J. Boorstin
Imagine you are driving down a highway from Cambridge to London. Its 10.30 p.m. and you still are an hour away from reaching your destination. You are hungry since you haven’t been able to grab a bite on the way. Far away you can see a faint light. You are hopeful. The closer you reach it becomes clearer. The inimitable M symbol of McDonald. Sigh of Relief! Dinner is not far away!
The world is not that sweet and simple anymore. We have heard that in times of the Mesopotamian and Egyptian civilizations the barter system of trade was prevalent. But the modern day consumers and sellers operate in an extremely complex environment. Hundreds of years ago people would have thought flying from one place to another to be some form of witchcraft. Nobody could have even imagined that commercial transactions can take place between Tokyo and San Francisco by the click of a mouse. The internet has affected and changed all major aspects of our lives. Whether it is staying in touch with nursery buddies through Facebook or buying any item we want from sites such as EBay, the world today just can’t function without the internet. It is in this complex and highly competitive market environment that traders have to make themselves known and marketed.
Brands and What Inspires Loyalty
Marketing battles take place in the mind of a consumer or prospect. That’s where you win. That’s where you lose.
The coming generations will not remember the apple for what fell on Newton’s head and helped him in discovering gravity. They will recognize apple as the symbol of iPad, iPod, iPhone and other Apple products. Who would have thought that the humble and unassuming fruit would come to be associated with the world’s most widely selling electronic products.
Brands grow on the consumer’s mind, make a place for themselves, till they become irreplaceable and indelible. Therefore, most companies would do anything; spend colossal sums of money to build their brand value. The competition is worse amongst Multinationals because they have to make a mark across the world. Ask a Nike loyalist why he wouldn’t shop in Adidas and in all probability even he wouldn’t have a concrete reason. It is more of an unconscious and involuntary behavior pattern.
The American Marketing Association defines brand loyalty as:
1. “The situation in which a consumer generally buys the same manufacturer-originated product or service repeatedly over time rather than buying from multiple suppliers within the category.” (sales promotion definition)
2. “The degree to which a consumer consistently purchases the same brand within a product class.” (consumer behavior definition)
According to Bloemer and Kasper, brand loyalty implies that consumers bind themselves to products or services as a result of a deep-seated commitment. To exemplify this point, they rendered a distinction between repeat purchases and actual brand loyalty. In their published research, they assert that a repeat purchase behavior “is the actual re-buying of a brand” whereas loyalty includes “antecedents” or a reason/fact occurring before the behavior.
There may not be a world of a difference between Coke and Pepsi; after all they are both soft drink brands. But a regular Coke consumer would rather stay thirsty than be unfaithful to his favorite brand. It’s a relationship that builds with time. But once established, consumers remain loyal to their favourite brands despite most odds.
Need for Trademarks
A great trademark is appropriate, dynamic, distinctive, memorable and unique.
Trademarks as the name indicates are distinguishing factors in trade, they help to mark the products of one seller and segregate them from another. They are a form of intellectual property owned by the proprietor of the mark and giving him a right to stop others from using it.
Trademarks serve as guiding lights for consumers, without which they would feel lost and vulnerable. Traditionally, trademarks have been deemed to perform three interlocking functions of serving as badges of origin, guaranteeing quality and advertising the products. A certain expected quality is associated with every trademark and this is what makes trademark infringement such a serious issue. Article 2 of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks contains a list of examples of signs of which a trademark may consist. It is worded as follows: ‘A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.’
Protecting Trademarks: A seller cannot afford to let anyone steal his brand name because along with the name they would also steal all his customers. It is in his interest to get the mark registered, no matter which jurisdiction he is in. Registration of a trademark helps the owner to get the right to sue for infringement in addition to passing off. It is easier to prove infringement. The common law of passing off requires establishing the classic trinity of goodwill, misrepresentation and damage. However, almost all trademark registering authorities necessitate the mark to be distinctive and not bearing resemblance to someone else’s mark. It is a prerequisite and an essential requirement. The very purpose of a trademark is to distinguish goods and/or services of one trader from another. Despite “You Shall Not Steal” being very clearly spelt out as one of the Ten Commandments, it’s the most common crime in society. Since times immemorial, man has always coveted what his neighbor had. Intellectual Property is no exception. When man’s ideas first gained protection, they also acquired threat. In a famous case the WIPO Arbitration and Mediation Center ruled that the website named Madonna.com was registered and being used in bad faith since it would tarnish the reputation of famous pop singer Madonna. In November, 1997, five companies sued entrepreneurs Richard Conway and Julian Nicholson, who registered the famous British company names as domains for resale. The U.K. High Court granted injunctions against the One in a Million for the threat of “passing off” and trademark infringement, ordering the two Brits to surrender the domain names and pay 65,000 pounds to the trademark owners. Trademark is probably the most threatened intellectual property right. Building a trademark may take years but someone can cash in on another’s goodwill in seconds.
I like being unconventional.
Florence Griffith Joyner
Smell, sound, taste, color, shape, etc. of products are considered unconventional trademarks firstly because they have developed recently and secondly because they have not been accepted easily in any country of the world.
I. Registering Smell: Juliet knew the importance of smell as a sensory organ when she said, “What’s in a name? That which we call a rose by any other name would smell as sweet.” However, in practice it may not be so easy to describe and identify smell. Graphical representation of unconventional marks is a major hurdle.
1. Sieckmann Case (The case that restricted the reach of trademark protection):
The ECJ has conclusively laid down the requirements to be fulfilled before the Court in Sieckmann v German Patent Office before graphical representation can be deemed satisfactory. It concerned the protectability of smell trademarks and the Applicant used a number of methods to try to graphically represent the mark: a chemical formula; a verbal description (“balsamic-fruity with a slight hint if cinnamon) and a sample. None of them, either alone or in combination were held to be sufficient to meet the graphical representation requirement.
2. Eden Sarl Case (The not so precise strawberries):
The application by a French company to register the smell of ripe strawberries and consisting of the colour image of a red strawberry for soaps, face cream, stationery, leather goods and clothing failed on the grounds that it was not sufficiently precise.
3. Chanel Application (Scent not to be registered for scent!):
The Court also rejected Chanel’s application to register its fragrance of the world famous brand Chanel No.5. The application was excluded on the grounds that it resulted from the nature of the goods themselves.
4. Existing Registrations (The ones that made it):
In the past however, a few smell marks have been conferred with registration including a Dutch company’s tennis balls with the “scent of newly mown grass”; UK registrations for tires with “a floral fragrance/smell reminiscent of roses” and darts with “the strong smell of bitter beer.”
II. Registering Colour (Single as well as Combinations)
1. Cadbury Registration (Sweet Taste of Life):
The unforgettable purple of Cadbury has won a long tussle with Nestle over registration of the color for which it has established use since 1914. Even single colours can be registered as trademarks if acquired distinctiveness can be proved and it can be represented graphically.
2. Libertel Case (Orange Telecom):
The European court of Justice decided in Libertel Groep v Benelux Merkenbureau that to be represented graphically, colour marks must be presented in a way that is “clear, precise, self-contained, easily accessible, durable and objective.” In Libertel the application for a single colour mark, orange, in relation to telecommunications was rejected.
3. KWS Saat Case (The other orange case):
KWS Saat applied to register as a Community trademark the colour orange for seeds, treatments for seeds and for forestry products (Classes 7, 11 and 31). OHIM and the Court of First Instance (CFI) rejected the application: the colour was devoid of distinctive character for those products, since it was neither original nor uncommon. ECJ dismissed the appeal.
4. Heidelberger Case (No monopoly if no clarity):
Combinations of colours have in fact been recognized as registrable marks in most jurisdictions. However, even in those cases, the applicant must have the colours arranged in a particular pattern or else registration is difficult. The Court followed this principle in the Heidelberger Bauchemie when it rejected an application to register the combination of colours yellow and blue “In every conceivable form.” According to the ECJ Ruling, the application for registration should include a systematic arrangement associating the colours concerned in a predetermined and uniform way.
III. Registering Sound:
NBC Chime (Sound of Music):
The first sound trademark to be registered by the US Patent and Trademark Office was the well-known 3 note chime of National Broadcasting Company with the description “The Mark Comprises a Sequence Of Chime-Like Musical Notes Which Are In The Key Of C And Sounded The Notes G, E, C, The “G” Being The One Just Below Middle C, The “E” The One Just Above Middle C, And The “C” Being Middle C, Thereby To Identify Applicant’s Broadcast Service.”
IV. Registering Taste:
Another kind of mark fast gaining acceptance is a taste trademark. An application for registering the taste of artificial strawberry flavour for pharmaceutical preparations in Eli Lilly and Co v OHIM was rejected on the grounds that the description did not satisfy the Sieckmann requirements.
It is therefore obvious that registering unconventional trademarks is a tricky business. It is only through proof of acquired distinctiveness and graphical representation (which is further limited by the Sieckmann requirements) that chances for registration can be enhanced.
Product Shapes as Trademarks
I found I could say things with color and shapes that I couldn’t say any other way – things I had no words for.
Circle, Square, Rectangle, Triangle; we were taught in school how to distinguish one shape from another. Identifying a shape in other words would be child’s play. Could something so basic be then used as a differentiator; as a differentiating factor between one good and another? Coca Cola thinks it could. Ask an average well-informed consumer to close his eyes and imagine a Coca Cola bottle and he would unmistakably be able to visualize its exact shape. The product has become an intrinsic part of our lives even though we might not realize it. Most people memorize through repeated association. Just like the regular kinds of trademarks, even product shapes can acquire distinctiveness through repeated use. Distinctiveness, whether inherent or acquired needs to be proved.
How to Determine Distinctiveness?
What attributes or characteristics go in making a mark distinctive? In Philips v. Remington, the ECJ was asked:“ Where a trader has been the only supplier of particular goods to the market, is extensive use of a sign, which consists of the shape (or part of the shape) of those goods and which does not include any capricious addition, sufficient to give the sign a distinctive character for the purposes of Article 3(3) in circumstances where as a result of that use a substantial proportion of the relevant trade and public a) associate the shape with that trader and no other undertaking; b) believe that goods of that shape come from that trader absent a statement to the contrary?”
The court’s response indicated that it was possible for a shape to acquire a distinctive character in these circumstances but that: a) the requirement cannot be shown to be satisfied purely on the basis of general abstract data, such as predetermined percentages (paragraph 62); b) the distinctive character of a shape, even that acquired by the use made of it, must be assessed in the light of the presumed expectations of an average consumer of the product, who is deemed to be reasonably well informed and reasonably observant and circumspect (paragraph 63); c) the identification of the shape as originating from a given undertaking must be as a result of the mark as a trade mark and thus as a result of the nature and effect of it, which make it capable of distinguishing the product concerned from those of other undertakings (paragraph 64); d) it is for the national court to verify that the requirements of the provision are satisfied on the basis of specific and reliable data (paragraph 65).
Thus, each case would have to be judged on an individual basis and there does not seem to be any fixed standard on the basis of which the courts can decide the point.
In the Windsurfing Chiemsee Case, the ECJ set out the test to be applied in order to determine whether a trade mark has acquired a distinctive character.
“In assessing the distinctive character of a mark in respect of which registration has been applied for, the following may also be taken into account: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (paragraph 51).
Trademarks contrasted with Design Patents
In an unprecedented move, trademark registration has also been granted by the U.S Patent and Trademark Office for the Apple iPod shape. It is in the business interests of Apple since a design patent would be available for only a limited period of time but trademark registration can be renewed indefinitely as long as use can be shown and justified. Critics feel that such blatant monopolization of the rectangular shape with the wheel in the middle is prejudicial against competitors since it could be a fairly common shape for music playing gadgets.
The question arises that if shape trademarks and design patents, both are given on the basis of outward appearance and visual appeal, how does one distinguish one from the other and in which intellectual property category should a mark go. It is of pertinence to mention here that though design patents are granted purely to protect the ornamental features of an invention, trademarks are symbols for identification and advertising. Depending on the function performed by it, a mark may serve both as a trademark and as a design and the two laws may be applicable simultaneously.
Law in the European Union
Shapes can serve as excellent identifiers for products but that does not mean that all product shapes can be easily registered. The First Council Directive 89/104 of 21st December 1988 to Approximate the Laws of the Member States relating to Trade Marks (89/104/EEC) (hereinafter referred to as “The Directive”) and The Council Regulation (EC) No 40/94 of 20 December 1993 on the Community Trade Mark (hereinafter referred to as “The Regulation”) contain the relevant provisions. The Trademarks Act, 1994 (hereinafter referred to as “The Act”) in the UK has also been amended to incorporate these provisions.
Three dimensional trademarks have been given due consideration in Article 3(1) (e) of The Directive which states that those signs will not be registered which consist exclusively of the shape which results from the nature of the goods themselves, or the shape of goods which is necessary to obtain a technical result, or the shape which gives substantial value to the goods. In the words of Advocate-General Ruiz-Jarabo Colomer in Philips v Remington, “natural, functional or ornamental shapes.” The same provision has also been made in Article 7(1) (e) of The Regulation. Along with the Council Directive, there have been quite a few decisions of the European Court of Justice (Hereinafter referred to as “The Court”) which serve as guidelines on what to consider with respect to three dimensional trademark applications.
Burrell, Beverly Smith and Coleman identify a number of causative factors which may have led to the provisions on shape marks:
• The tendency of EC legislation to harmonise rights coupled with the fact that shapes of products and their packaging were protected in a number of Member States;
• Evidence of consumer recognition of that shapes could be distinctive as to origin; the European Courts have, however, been skeptical about this;
• An expanded view of trademark function as extending beyond origin to quality;
• Protection of the advertising or merchandising function of distinctive shapes.
However, experience has shown that there have been more cases of rejections than registrations! Several criteria are looked into to clear the road for registration.
The Distinctiveness Hurdle
If you’ve got a brand like this, any brand in fact, you need to stay true to your roots if you want to maintain your distinctiveness. It’s very easy to start to lose that edge by appealing to a very broad audience
1. Henkel and P&G Applications (Soap is for cleaning, not for fancy registrations):
Just like any other trademark, an application for registering a product shape must be able to show distinctiveness. European Court of Justice in 2004 rejected applications from Henkel and Procter and Gamble on the ground that the detergent cake shapes were not distinctive.
2. Maglite Torch Case (No light of day for 3D torch):
The Court rejected the application for registering the 3 dimensional shape of the Maglite torch on the same ground while commenting that “Only a mark which departs significantly from the norm or customs of the sector and thereby fulfills its essential function of indicating origin, is not devoid of any distinctive character.”
3. Sisi Werke Packaging Case (You cannot package your juice and register it too!):
The Court upheld the OHIM decision in which 8 CTM applications by Sisi Werke, for registering the packaging of fruit juices and drinks were rejected. The Court held that there was nothing special to distinguish the packaging from that of others.
4. Bongrain Application (Cheese maybe fashionable, but not unique enough):
The question of distinctiveness was also considered when an application to register the floral shape of its highly renowned cheese by Bongrain resulted in failure. It was held that there was a public interest in preserving certain signs for other traders to use in relation to the same or similar goods to maintain freedom of action and competition. Quoting A.J.Pike, the Comptroller General on behalf of the Registrar (24th day of January, 2002), “Cheese and other dairy products (such as butter) are available in a variety of shapes, sometimes for historical reasons or for aesthetic reasons. There is nothing strikingly unusual about the shape in question which suggests that it is a source identifier.” He also went on to refer to the application by Kabushiki Kaisha Honsha to register the shape of a bottle. Mr Justice Laddie said: “Like Mr James, I can see nothing which would convey to someone who was not a trade mark specialist that this bottle was intended to be an indication of origin or that it performed that function. Even were it to be recognized as of different shape to other bottles on the market, there is nothing inherent in it which proclaims it as having trademark significance.”
5. Vienetta Case (Public recognizing you is not good enough):
Product shapes are seemingly easier to register than smell or sound trademarks since they can be represented graphically. However, it has been seen in practice that the number of successful registrations is approximately not more than 4% of the applications. The recent Vienetta decision by Jacob J clearly demonstrates the problems faced by applicants for three-dimensional trade mark applications and the boundaries of trade mark protection. Unilever sought to register two shape marks for ice cream dessert products in Class 30, which were sold under the word mark Vienetta. One application was for a “white” version of the mark and the other was for a “dark.” Nestle opposed both applications on various grounds including that the two marks consisted of the shape which resulted from the nature of the goods themselves and that they lacked distinctiveness. Jacob J held that the shape of ice-cream was not inherently distinctive and suggested obiter that, as a matter of principle, shape marks are inherently devoid of distinctive character. Where a shape mark has not been used, the public cannot have been educated to perceive the shape as a trade mark. Regarding the question of acquired distinctiveness, he found that although a substantial public recognition of the shape as that of a particular trader has been established, it has not been shown that the trader has used the shape as a badge of trade origin or that the public rely upon the shape to denote trade origin.
6. Eurocermex Case (Beer in Big Bear Trouble):
Eurocermex, which markets and distributes the Mexican beer ‘CORONA’ in Europe, filed an application at OHIM for a three-dimensional Community trade mark which consisted of a long-necked bottle, filled with yellow liquid and with a slice of lime wedged in the top. On 21 December 2001, OHIM refused the application for the goods ‘beers, mineral and aerated waters, fruit juices’, covered by Class 32, and the services ‘restaurants, bars, snack bars’, covered by Class 42, on the ground that the trade mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94 and that Eurocermex had failed to adduce evidence showing that the trade mark had become distinctive in consequence of use which had been made of it.
7. Lindt Chocolate Bunnies Case (Poor Bunnies shown the door):
The chocolate bunnies managed to find a place in the hearts of millions of children but failed on the trademarks register. In Chocoladefabriken Lindt & Spruengli v OHIM, The General Court of the European Union held on 17 December 2010 that the three dimensional shapes of a chocolate bunny and chocolate reindeer wearing a red ribbon cannot be registered as Community trademarks for class 30 chocolate goods due to a lack of distinctiveness.
8. Toblerone Case (The most popular chocolate in the world manages to scrape through):
Product shapes can serve as excellent trademarks as long as they are peculiar and distinguishing. Take for example the unmistakable triangular three dimensional shape of the Toblerone chocolate bar which every chocolate lover is familiar with. Kraft Foods fought an arduous battle in Kraft Foods Schweiz AG v Cocachoc though it ended well for them.
The Functionality Hurdle
1. Philips Judgement and its Repercussions (Anything functional can say goodbye):
One of the most comprehensive judgments on the subject is the decision given by the European Court of Justice in Phillips versus Remington. The Philips three headed shaver had become a rage in the market when their rivals Remington came up with an identical product. What followed was a lengthy legal dispute beginning in 1995 and ending with the Court’s decision on 18th June 2002. The Court while analyzing Article 3(1) (e)(ii) of Council Regulation No 40/94 held that the 3 dimensional mark of the Philips three headed shaver was invalid on grounds of it being useful only to obtain a technical result. The ECJ ruled, that this subsection “must be interpreted to mean that a sign consisting exclusively of the shape of a product is unregistrable by virtue thereof if it is established that the essential functional features of that shape are attributable only to the technical result.” The judgment has been referred to and followed in many subsequent cases.
2. Lego Bricks Case (Building Blocks fit in children’s nurseries, not on trademark registers):
A shape which is necessary to obtain a technical result is not registrable under the European Union for obvious reasons. Granting trademark registrations for functional shapes would jeopardize the interests of competitors trying to achieve the same technical result. The makers of the world famous Lego bricks in Lego Juris A/S v OHIM realized it the hard way that making their way into the playrooms of most children did not necessarily entail securing their place in the Registry. They could not justify that the shape of the Lego bricks was not intended to achieve a technical result, i.e. to join the building blocks.
3. Daimler Chrysler Registration (Car design sails through):
Daimler Chrysler has been able to obtain trademark registration for its motor car design. Even though it may have had a functional purpose, it was distinctive and different from the designs of others.
4. Yogurt Twin-Pot Case (What’s so great about the twin pot?):
In Molkerei Alois Muller GmbH & Co’s the application for the yogurt “twin pot” for “yogurts: desserts and puddings” in Class 29, and “desserts: rice desserts” in Class 30 failed on grounds of being devoid of any distinctive character and consisting exclusively of the shape of goods necessary to obtain a technical result.
5. Benetton v G-Star:
G-Star was the owner of a Dutch trade mark consisting of the shape and stitching of jeans. Benetton produced jeans similar to G-Star’s, and G-Star brought an infringement action. G-Star failed in its action. The Dutch Supreme Court had referred the following question to the ECJ:
i. Is registration permanently precluded where the nature of the product is such that its appearance and shaping determine its market value entirely or substantially as a result of their beauty or original character; or
ii. Does the prohibition of art. 3 (1) (e), indent 3 Directive not apply, where, prior to the application for registration, the attractiveness of the relevant shape to the public has been determined predominantly by the recognition of it as a distinctive sign;
The ECJ ruled that the shape of product which gives substantial value to that product cannot constitute a trade mark under art. 3(3) Directive where, prior to the application for registration, it acquired attractiveness as a result of its recognition as a distinctive sign following advertising campaigns presenting the specific characteristics of the product in question.
The Substantial Value Hurdle
Aesthetic matters are fundamental for the harmonious development of both society and the individual.
1. Substantial Value and Passing Off: On the issue of ‘substantial value’ the UK case law on passing off by get up is relevant. The courts have to consider whether the appearance of a product acts as a badge of origin in attracting customers or whether it encourages purchase for other reasons.
i. Louis Chair Case:
In Jarman & Platt v Barget, customers bought the plaintiff’s ‘Louis’ chairs because they valued their appearance. This was not regarded as distinctive of the plaintiff’s chairs alone.
ii. Jif Lemon Case (The Classic Trinity for passing off):
The Court laid down the three requirements (Classic Trinity) to prove passing off in Reckitt & Colman v Borden as goodwill, misrepresentation and damages. The plaintiff was selling lemon juice in containers of the size, colour and shape of a real lemon since 1956. In 1975, the defendant entered the UK market selling lemon juice in similar bottles with just a slightly flattened base. Lord Oliver observed that supermarkets tend to sell only one brand and possibly their own house brand of preserved lemon juice. He noted Reckitt & Colman’s survey evidence showing that “a housewife presented with a display of these products in close juxtaposition would be likely to pick up . . . the [ReaLemon] product in the belief that what she was buying was the respondents’ Jif lemon juice” (p. 500) since Jif was the only “lemon-sized squeezy pack of lemon juice on the market” (p. 501). Concluding that the three elements are satisfied, the Lords affirmed the permanent injunction barring Borden from marketing lemon juice in lemon-shaped containers in the UK.
iii. Roho Cushions Case (Copycats go scot free):
A mere act of copying is not enough to prove passing off. Successful shape trademark contests are very rare as has been held in Hodgkinson & Corby v Wards Mobility Services. In this case the plaintiff had made a cushion specially for the disabled to be put in a wheelchair called the Roho cushion. The defendant brought an identical product in the market called the Flotair. In dismissing Hodgkinson’s action, Jacob J rejected the distinction between capricious additions and integral features of products. It is clear that both may operate as marks. Conversely, even an unusual added shape may not necessarily operate to distinguish a product from those of other traders.
2. Bang and Olufsen Loudspeaker Registration (Loudspeaker, loud and clear):
A Bang & Olufsen loudspeaker BEOLAB 8000 acquired registration, because of its unusual shape, its striking design quality and the ease with which consumers could recognize its shape which is significantly different from the norm. The Court ruled that “the shape of the mark is truly specific and cannot be considered to be altogether common. Thus, the body of the loudspeaker is formed of a cone which looks like a pencil or an organ pipe the pointed end of which joins to a square base. In addition, a long rectangular panel is fixed to one side of that cone and heightens the impression that the weight of the whole rests only on the point which barely touches the square base. In that way, the whole creates a striking design which is remembered easily.”
3. Dualit Toaster Case (If Classic, No Registration):
In Dualit , the court upheld the refusal of the Hearing Officer to allow registration of the shape of a toaster which had been described as a “design classic” and attracted a significant price premium over competing toasters.
4. Pine Tree Cards Case (Attractive but not substantial):
However, in order to bar a shape from registration any aesthetic surplus has to be substantial. In Julius Samaan Ltd v. Tetrosyl Ltd, the outline ‘pine tree’ shape of air freshening cards for hanging on the rear-view mirrors of cars did not confer substantial value within the meaning of the second indent, although it might be an attractive feature to purchasers.
Law in the United States
Trade Dress Registration
1. The earlier decisions on trade dress include Taco Cabana Inc v Two Pesos, a legal battle between two famous Mexican restaurants in USA. The plaintiff sued the defendant for infringing its trade dress under s. 43(a) of the Lanham Act by imitating the appearance of its restaurant. The Court ruled on the meaning if trade dress as “…the overall image of the business.”
2. One of the landmark judgments in United States on registration of trade dress is Duraco Products, Inc., Appellant, v. Joy Plastic Enterprises, Ltd (1996). The Court referred to its judgement In Merchant & Evans, Inc. v. Roosevelt Building Products Company, Inc (963 F.2d at 633). In order to qualify for trade dress protection, the plaintiff must show: (1) that the imitated feature is non-functional, (2) that the imitated feature has acquired a “secondary meaning,” and (3) that consumers are likely to confuse the source of the plaintiff’s product with that of the defendant’s product.
Doctrine of Aesthetic Functionality
The principle of functionality followed by ECJ is also recognized in the United States.
1. The Lanham Act has accommodated shapes as trademarks in section 43(a). The ambit of section 43(a) was held to be broad by Supreme Court in Qualitex Co v Jacobson Products Co. Justice Breyer reasoned that colors could constitute descriptive trademarks, because while colors do not automatically evoke a connection to any product by themselves, they could take on secondary meaning over time, in the course of use in the marketplace. In this way, a color could serve the chief purpose of trademarks, that of identifying the source of a particular product.
It was also held that the functionality doctrine was no bar to the registration of the plaintiff’s color as a trademark. Justice Breyer determined that a product feature is only functional “if it is essential to the purpose of the article or if it affects the cost or quality of the article”. The color in this case acted purely as a symbol, and served no other purpose (green-gold color for the pads which were sold to dry cleaning firms to use in their cleaning presses).
2. In a more recent case of Walmart Stores v. Samara Bros the Supreme Court held that the look of a product should automatically identify with the creator.
3. In Pagliero v Wallace China a floral pattern on china was denied protection. Colour and designs of dresses were not regarded as an indication of source.
The doctrine of aesthetic functionality apparently originates from a comment in the 1938 Restatement of Torts, which states that “when goods are bought largely for their aesthetic value, their features may be functional because they definitely contribute to that value and thus aid the performance of an object for which the goods are intended.
Law in Japan and China
On April 1, 1997 Japan adopted a registration system, with strict requirements, for three-dimensional trademarks:
(1) If a trademark consists solely of a mark indicating, in a common manner, the shape of goods or packaging, it may not be registered.
(2) Notwithstanding Article 3, Section 1, Paragraph 3, a trademark may be registered if, as the result of the use of the trademark, consumers are able to recognize the goods bearing the trademark as those pertaining to a business of a particular person.
(3) If a trademark consists solely of a three-dimensional shape of goods or the packaging of goods that is indispensable for the goods or their packaging to properly function, it cannot be registered.
1. The IP High Court has given full effect to the legal provisions in various judgments including registration of the Coca Cola bottle shape followed by registration of the Yakult bottle shape with respect to lactic acid drinks. The Yakult case is a fascinating read since the mark was once earlier refused registration in 2001 on the grounds that it was not distinctive. However, in wake of the Coca Cola case and the increasing acceptance of shape marks worldwide, the case for the Yakult bottle gained strength. Convincing evidence was also provided in favour of it since in various surveys conducted in 2008, more than 98% of the public said that the bottle reminded them of the Yakult drink.
2. The most recent instance of Japan granting registration to three dimensional trademarks is of Y-shaped chairs, applied for by Carl Hansen and Son in 2011.
China has also kept pace with the international recognition of three dimensional marks by including three dimensional symbols in the definition of trademarks.
1. However, enforcement has not been a cake walk as is evidenced by famous case Nestlé SA vs. Master Sauce Co. Ltd. Nestle filed an infringement action against Master Sauce for copying its square based bottle used for soya sauce. Nestlé’s mark was found to be only weakly distinctive and that there was no infringement.
2. Another chocolate company had a ‘sweet victory’ in China with respect to product shape trademark protection. In 2003 the Italian manufactured but worldwide popular Ferrero Rocher chocolate became the first three dimensional mark to be approved of in China.
Law in India
Shape marks can be registered in India. The definition of a mark as given in Section 2(m) of the Trademarks Act, 1999 includes shape of goods and packaging. The test of functionality has been applied in Indian law as well on exactly the same lines as The Directive. Section 9 (3) of the Act while including it in its absolute grounds for refusal of registration states that those shapes of goods cannot be registered which result from the nature of goods themselves or which are necessary to obtain a technical result or which add substantial value to the goods.
Zippo Lighters Case: The shape of Zippo lighters after being successful in the US has also been registered in India. Its statutory status has also been seconded by the Delhi High Court in 2006 in the case of Zippo v Anil Moolchandani against a company selling phony lighters. The Learned Judge Mr.Justice H.R. Malhotra commented by citing Philips Electronics NV v. Remington Consumer Products Ltd., at page 411, “Like other trademarks it would be sufficient for a shape mark to enable the public concerned to distinguish the product from others which have another commercial origin, and to conclude that all the goods bearing it have originated under the control of the proprietor of the shape mark to whom responsibility for their quality can be attributed.”
Law in France and Germany
Cases in Germany
In 2005, the German Federal Supreme Court held that the shapes of Porsche Boxster and Porsche 911 were protected as trademarks under the German Trademark Act.
The Court of First Instance held that the elongated shape with rounded ends of the Mars chocolate was not considerably different from that of other chocolate bars and hence declared the registered mark as invalid.
Lexomil case in France
In 2004, the French High Court ruled against registration of the LEXOMIL pill shape because the tablet-breaking feature could be obtained with other shapes. However, the Versailles Court of Appeal reversed the decision in 2005, ruling that the breakable function and the overall shape of the LEXOMIL pill did not fulfill a technical function, thus opening the way for other pill shapes to be registered as French trademarks.
There has been a plethora of case law in the field of unconventional trademarks, sometimes consistent and sometimes erratic. In Henkel the ECJ set out the test to be applied under Article 3(1)(b) in the case of a three dimensional trademark consisting of the shape of packaging for goods of this nature. The court stated: “For three-dimensional trademarks consisting of the packaging of goods which are packaged in trade for reasons linked to the very nature of their product, their distinctive character within the meaning of Article 3(1)(b) of Directive 89/104 must be assessed by reference to the perception of the average consumer of such goods, who is reasonably well informed and reasonably observant and circumspect . Such a trade mark must enable such a consumer to distinguish the product concerned from those of other undertakings without conducting an analytical or comparative examination and without paying particular attention.”
If the shape is strikingly different from existing shapes, protection may be available. Further, in case of most product shapes some additional obstacles are prevalent in most jurisdictions. Shapes which are necessary to obtain a technical result are not registrable. So are shapes which add substantial value to goods. On the whole, there has been great hesitancy to confer registration on product shapes. If acquired distinctiveness can be shown, there will be greater chances to get the shape registered. However, then also 100% chances cannot be guaranteed. Or the applicant can try to convince the Office or the courts that the product has obtained distinctiveness through use. But that can be difficult, unless the product in question has become truly well-known, such as Philippe Starck’s citrus press or the DURACELL battery. Nevertheless, traders have something to smile about since there is increasing acceptance of product shapes in the minds of consumers as indicators of origin. Indeed, random and arbitrary registrations of product shapes would be harmful to free commerce and prejudicial to the interests of other traders. There have to be uniform standards maintained and followed across the world.