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| The shape of your world |
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Contact: Baldwins
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How important is “shape” to you when you go shopping? Does a particular shape of cosmetic bottle in the sea of bottles at the local pharmacy attract your attention? Maybe shape is important to your own business. Have you found that sales of a product have gone up after you changed the shape of a product or the packaging in which it is supplied?
Three-dimensional shapes
In an increasingly competitive market, the 3-dimensional shape of goods is being used more than ever before to distinguish different manufacturers’ products. The shape of the product or its packaging can be an integral component of a brand.
Distinctive brands, colours, labels, logos or sounds may all be protected by trade mark registrations. A trade mark registration enables one trader to stop others from using the same or similar trade mark for rival products.
The Intellectual Property Office of New Zealand (IPONZ) which issues trade mark registrations has in recent years allowed trade mark registrations for distinctive 3-dimensional shapes such as the Dior® perfume bottle, the Bic® pen shape, the Buzzy Bee® shape, the Reebok® sneaker and the Toblerone® bar.
Kit Kat decision
A recent IPONZ decision highlights the uncertainty and potential difficulties of obtaining trade mark registration for 3-dimensional shapes in New Zealand. Nestlé’s application to register the shape of the Kit Kat chocolate bar failed. The Assistant Commissioner of Trade Marks considered that the absence of a specific reference to shape in the New Zealand Trade Marks Act 1953 meant that 3-dimensional shapes may not be capable of trade mark registration. He also considered that the trapezoid shape of the Kit Kat bar was a common geometric form and its ability to distinguish the Kit Kat bar from other manufacturers’ bars was not very great.
The new Trade Marks Act 2002, which is due to come into full force in mid to late 2003, clarifies shape registrability by explicitly stating that a distinctive shape may be protected by a trade mark registration, provided that the shape is capable of distinguishing the goods of one manufacturer from those of another. However, the Kit Kat decision does highlight the apparently high threshold of distinctiveness needed for a product’s 3-dimensional shape in order to obtain a trade mark registration.
There have been similar problems overseas with registration of the Phillips three-headed shaver and the Walls Viennetta ice cream dessert. Crucial issues have been whether recognition of the trade mark by the public on the basis of past use is sufficient to establish distinctiveness of that product and whether the shape is purely functional and therefore not registrable.
The Australian position seems a little easier. Kenman Kandy applied to register a 3-dimensional six legged insect for candy. The Federal Court of Australia allowed the registration of the bug shape. The Kenman Kandy case illustrates that a common shape, such as a bug shape, applied in a new and distinctive way may well be registrable as a trade mark.
Design v trademark registration
Traditionally, distinctive shapes have been protected by design registrations, but these have limitations. Any public disclosure of a design before applying for the design registration can invalidate a subsequent design registration. Design registrations have a maximum term of 15 years. A manufacturer who might have spent many years successfully promoting a product supplied in a distinctively shaped package, will be reluctant to see another manufacturer producing a similar packaging once its design registration expires.
By comparison, protecting a 3-dimensional shape by trade mark registration has some advantages. Trade mark registrations may be renewed indefinitely, which may potentially provide the trade mark holder with an indefinite monopoly to a shape in relation to the goods or services for which it is registered, provided it continues to use the mark. In addition, the use of the shape need not be new on the date of filing for trade mark registration.
A trade mark registration obtained for a shape provides a powerful weapon to the trade mark holder in the arsenal of intellectual property available to protect their market advantage. The Kit Kat decision illustrates, however, that currently in New Zealand the threshold for showing that a shape has inherent distinctiveness is high. One option might be to apply for design registration first and for a trade mark registration at a later stage once there is public recognition of the distinctiveness of the shape.
Baldwins is a leading intellectual property law firm.
October, 2004
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