The changing shape of trademark legislation

What comes first in the mind of the consumer – the brand name or the way a product physically looks? It’s a chicken-and-egg sort of question for designers. Legally too, just how distinctive a design on its own can be is frequently a moot point.

Unilever, the owner of Wall’s ice cream, which manufactures Viennetta, applied in 1994 to have the unusual shape of its ice cream dessert (described as a Franz Hals frill) registered as a trademark. The application was opposed by Nestlé, which argued that the shape was not distinctive enough to warrant trademark protection. The English Courts have recently indicated they agree, but the case has been referred to the European Court of Justice.

European Union trademark legislation expressly provides for the possibility of registering as trademarks ‘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’. In other words, the shape may be registered provided it has a ‘distinctive character’.

In the Viennetta case the judge, Justice Jacob, accepted that the shape of Viennetta had achieved a ‘significant degree of public recognition’ as a result of the ‘massive use’ made of pictures of the product in advertising, and because of its high level of sales. Unilever also relied upon the results of a consumer survey in which 55 out of 82 respondents correctly identified Viennetta from its shape.

The judge was not convinced, however, that public recognition equates to a ‘distinctive character’. Justice Jacob considered that the function of a trademark is to act as a ‘badge of origin’, and in his opinion even though the shape of Viennetta has substantial public recognition, this does not mean that Unilever uses the shape of the product (as opposed to the brand name Viennetta) as a ‘badge of origin’, or that the public relies upon the shape to indicate the origin of the goods.

For Justice Jacob, the legal position was ‘not wholly clear’. He referred the case to the ECJ for a ruling on the issue of public recognition/ distinctive character .

So where does this leave companies that wish to protect the shape of their products against copying?

If the line taken by Justice Jacob is followed, it is likely that very few shapes will be registrable as trademarks, since the vast majority of products are sold by reference to a brand name or corporate identity, whether or not their shape is unusual or distinctive.

Even the classic Coca-Cola bottle, often held up as the archetypal shape trademark, may not qualify for protection, since it would be very difficult to prove that the public rely upon the shape as a ‘badge of origin’, as opposed to the ‘Coca-Cola’ brand name and packaging.

Whether or not the ECJ agrees with Justice Jacob’s approach, the chances are that it will remain difficult to convince Trademark Registries across Europe that a shape is sufficiently distinctive to justify registration – as Philips recently discovered in relation to the shape of its three-headed rotary shaver.

The problems are particularly acute for functional designs, due to specific exclusions in the trademarks legislation for shapes ‘necessary to obtain a technical result’ or which ‘give substantial value to the goods’.

But an alternative option is now available that bodes well for designers. National laws across the EU have recently been harmonised to permit registration of all sorts of designs, provided they are ‘novel’ and have ‘individual character’.

As from this month it has also been possible to apply for a single Community Design covering all member states of the EU, and the European authorities will begin processing applications for Community Designs on 1 April.

So far, we have no guidance from the courts as to how the new registered designs rules should be interpreted. It is probable, however, that the courts will be more receptive to protecting shapes as registered designs rather than as trademarks.

Indeed, one of Justice Jacob’s complaints in the Viennetta case was that companies are attempting to misuse the trademarks system in order to secure a perpetual monopoly on the shape of their products (since trademarks can remain registered indefinitely), when it would have been more appropriate to apply for registered design protection (which lasts for 25 years, provided the appropriate renewal fees are paid).

With the Viennetta trademark application on ice, pending the ECJ ruling, designers wishing to advise or impress their clients should be aware of applying for registered design protection. Particularly with new or unusual product shapes, it should be seen as an addition or even an alternative to filing a shape trademark application.