Practice Amendment Notice

PAN 3/07 - Issued 13 June 2007

Shapes/Representations of the goods

This notice clarifies practice in relation to the graphical representation of shapes and notes that ‘design concepts’ cannot be registered. It also notes an appointed person decision in relation to Section 3(2)(b), where the shape was considered not to be exclusively functional. Paragraph 18 has been amended.

18 Shapes/Representations of the Goods

There have been several cases before the English and European Courts which have provided guidance in relation to the examination of applications for shape marks. The main points arising from these form the basis for examination practice.

18.1 Graphical Representation

The representation must disclose the mark in a way which is “clear, precise, self-contained, easily accessible, durable and objective”. This is relatively easy to do when it comes to shape marks. It is straightforward to represent the shape of a product or its packaging by filing one or more pictorial representations of the shape in question. It is not normally necessary to file more than 6 views of a shape in order to represent it graphically. Often fewer views will be sufficient. Where more than one view is filed, it is advisable to include a description of the view, such as “front”, “side”, “top”, “perspective” etc.

It is possible to register a part of the shape of the product or its packaging as a trade mark. Consequently, there may be no need to show all of the shape of the product or its packaging in the representation(s) filed. However, no protection can be gained for any feature of shape which is not clearly and precisely represented in the mark.

Trade marks may protect particular shapes, but not design concepts. It is not therefore possible to represent a shape in words alone. Nor can a written description serve to represent features of shape which are not apparent from the pictorial representation(s) of the mark filed. Further, descriptions which suggest that protection is sought for a class of shapes and that the pictorial representation(s) are merely illustrative, will be rejected. Accordingly, a description that “the mark consists of a six sided computer monitor, as shown in the form of application” is not acceptable, but the following description would be: “the mark consists of the shape of the six sided computer monitor shown in the [above] representation”.

18.2 The law on distinctiveness: 3(1)(b) & (c) - shape of the goods

There is no distinction in law between different types of marks with regard to the test for distinctiveness. This was confirmed by the ECJ in Linde, joined cases C-53/01 to 55/01 [2003] ETMR. 78. . However, the Court found that the assessment for compliance with 3(1)(c) must take account of the public interests underlying that provision, which is to keep characteristic shapes free from the constraints of a statutory monopoly.

Further, the Court stated that whilst the legal test for distinctiveness is the same for shape marks as for other marks, recognition must be given to the differing perceptions of the average consumer in relation to non-traditional trade marks. In particular, the average consumer may not as readily accept the appearance of the goods themselves as an indication of trade origin. This is because “average consumers are not in the habit of making assumptions about the origin of the products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element”:

Procter and Gamble v OHIM , Joined Cases 468/01 P to 472/01 P

In both the Procter and Gamble cases, and in Henkel, C-218/01, the ECJ stated that the test for a shape-of-goods mark under 3(1)(b) was whether the mark enabled an average consumer, “without conducting an analytical or comparative examination or paying particular attention”, to distinguish the goods concerned from those of other traders. The Court observed that only a (shape-of-goods) trade mark which departs significantly from the norms or customs of the sector and thereby fulfils its essential function of indicating origin possesses the distinctive character necessary for registration.

In Procter and Gamble, the ECJ rejected the appellant’s argument that the marks were distinctive because, inter alia, the type of product was relatively new and there were no similar dishwasher tablets on the market at the time the applications were filed. The Court repeated its conclusions in Henkel (above) and pointed out that “the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character”. Consequently, it would appear that in deciding which shapes are the “norm” for the sector, account is also to be taken of shapes which are likely to become the norm.

It may be easier to show that a shape has the necessary distinctive character where there is evidence that, contrary to the normal assumption made about consumers habits, consumers in the relevant sector do in fact rely upon the appearance of the shape of the product or its packaging as a means of identifying the origin of the product. An example of this is the use of vehicle radiator grilles, which are used by manufacturers as means to differentiate their products, in a trade mark sense. This formed the basis for the CFI’s judgment in the DaimlerChrysler “Jeep” grille case (T-128/01) where it was found that the appearance of the grille did have the necessary capacity to distinguish the product of that vehicle manufacturer from those of other economic operators in that trade.

18.3 Shape of packaging

The ECJ ruled, in the Henkel case (C-218/01), that for the purposes of Sections 3(1) and 3(2), the shape of packaging is to be treated as the shape of the goods themselves where the goods are traded in packaged form for reasons associated with the nature of the goods; for example, beverages, cleaning fluids. In other cases an objection to a trade mark consisting of the packaging of the goods may only arise under Section 3(1)(d) – if it is already common in the sector – or Section 3(1)(b) – if it is non-distinctive for another reason.

18.4 Section 3(2)

Section 3(2) of the Act states:

• (2) A sign shall not be registered as a trade mark if it consists
• exclusively of-
• (a) the shape which results from the nature of the goods themselves,
• (b) the shape of the goods which is necessary to obtain a technical
• result,
• or
• (c) the shape which gives substantial value to the goods.

Section 3(2)(a). When the Philips case was before the English Court ofAppeal, [1999] ETMR. 816, Aldous LJ. observed that the purpose of Section 3(2)(a) is to keep free basic shapes of goods that should be available for use by the public.

Section 3(2)(b). The ECJ ruled, in Philips, 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.”This does not automatically mean that a shape is unregistrable where all its features serve some functional purpose. If it can be shown that an essential feature (which may include the overall impact arising from the way the individual features are arranged) is not only attributable to a technical result, i.e. the shape is not one which would be adopted for its functional efficiency, it will not be caught by 3(2)(b). In Ekornes ASA’s Trade Mark, [BL O-017-06] Mr Hobbs QC as The Appointed Person reversed a decision of the registrar to refuse to register the shape of a chair on the grounds that its essential features were all functional. The Appointed Person found that although all the features of the chair were in one sense functional, there was nevertheless an excess of form over function. The decision to refuse registration of the mark on other grounds was upheld.

Shapes which do consist exclusively of functional features attributable only to the technical result will be caught by Section 3(2)(b); marks in this category are deemed to be incapable of acquiring a distinctive character and therefore the filing of evidence will not overcome the objection.

The ECJ has held that the word “necessary” in the equivalent Article of the Trade mark’s Directive does not mean “the only”. Accordingly “the ground for refusal or invalidity of registration imposed by that provision cannot be overcome by establishing that there are other shapes which allow the same technical result to be obtained.” This prevents a limited amount of economic operators in a given trade area permanently monopolising shapes which achieve a particular technical result. It is in the public’s interest that legal protection of purely functional shapes is confined to patent rights, which are subject to demarcation in length of time.

Section 3(2)(c). This subsection covers shapes which add substantial value to the goods, disregarding any value attributable to a trade mark (i.e. source identification) function. As above, this provision is intended to prevent the securing of a permanent monopoly in the type of design which should be protected under designs legislation, limited in length of time. However, shapes which are, or have been, the subject of registered designs are not excluded from registration unless the shape adds substantially to the value of the goods. It is therefore appropriate to consider whether a substantial proportion of the value of the product to the consumer is attributable to its shape. In many cases this will require a comparative evaluation of the value of the shape in question as compared to those used by competing products.

However, this approach may not assist where purely ornamental products are concerned, such as figurines, where the shape of the product will inevitably also account for a substantial part of the value of competing products.

18.5 Practice

There is no requirement that shapes of goods are only registrable upon evidence of acquired distinctiveness; however, if there is an objection under Section 3(2), evidence of use will not assist that objection. Where an application faces objections under Sections 3(1) and 3(2), the 3(2) issue must be addressed before, or alongside, any evidence put forward in relation to distinctiveness.

If the essential features of the shape are characteristic of the goods or their intended purpose, the mark will be open to objection under Section 3(1)(c). In order to avoid an objection under Section 3(1)(b) and/or (c) a shape mark must be sufficiently different from a shape which is:

• i) characteristic of the product;
• ii) the norm or customary in the sector concerned;
• iii) a shape likely to be taken by the product concerned;- so as to permit an average consumer, “without conducting an analytical or comparative examination or paying particular attention, to distinguish the goods concerned from those of other traders”.

In other words, the shape must not be descriptive, must stand out from the crowd and, in the case of new product developments, must not be a shape likely to be taken for the product concerned.

The amount of attention that an average consumer pays to the goods and the significance he or she attaches to their shape varies from product to product.Consequently, if there is evidence, or it is well known, that shapes are a customary means of distinguishing the source of a particular category of goods, shapes which stand out to a lesser degree may be acceptable as trademarks. Examples of such goods include perfume bottles, such as:

Where there is no evidence that consumers customarily rely upon the shape of the product itself or its packaging to distinguish the goods of different undertakings, there will be a greater requirement for the shape to stand out from the normal range of product variations before it can be accepted as liable to distinguish the goods of one undertaking from those of others. For example, this mark was accepted for alcoholic beverages:

However, the mark below was found prima facie to lack the distinctive character necessary to distinguish the goods of one undertaking from those of other undertakings in the market for dairy products, which are relatively low cost products generally bought without a great deal of care and attention to subtle variations in the shape of packaging.

The position in some fields, eg soft toys and jewellery, where the shape of the product varies greatly without signifying trade source, will make it more difficult (but not impossible) for a shape to serve a trade mark function for certain categories of goods.

A new shape may still not strike an average consumer as having a trade mark significance if the difference between the shape of the product and other existing products appears to be attributable to a technical advance or is merely attributable to a decorative or ornamental purpose. This shape of an agricultural implement, the club tine, (O/005/99),[2000] RPC. 24, was shown to be different to others in that area of trade.

The bulbous end differed from others on the market but was a feature of the tine entirely to achieve the technical result of being more hard-wearing. The other end was designed purely to fit onto the agricultural apparatus used to pull the tines through the ground. Since the entirety of the shape is that which is necessary to obtain a technical result, it was held to be objectionable under Section 3(2)(b). It was also held to be devoid of any distinctive character as a trade mark because the average consumer for those goods would not attribute any trade mark significance to a shape whose features were attributable to a purely functional purpose.

In assessing an application against Section 3(2)(b), consideration should be given to what the nature of a “technical result” is likely to be for that category of goods. The term should be interpreted broadly and, as well as the more obvious types of technical function, includes shapes which, for example,

• fit with another article
• give the most strength
• use the least material
• facilitate convenient storage or transportation

Shapes which are, or have been, the subject of a claim in a patent application are not excluded per se by Section 3(2)(b) of the Act, but the fact that functional claims have previously been made about the shape will be taken as prima facie evidence that those aspects of the shape identified as being functional in the patent claim are necessary to achieve a technical result.

If all significant aspects of the shape applied for are attributable only to the achievement of a technical result, the sign will fall foul of Section 3(2)(b). The test is whether there are any significant aspects of the shape or its arrangement which are not only attributable to the achievement of a technical result. Trivial embellishments, are unlikely to be sufficient to resist an objection under Section 3(2)(b).

The “floral cheese” shape shown below was objected to under Section 3(1)(b) because the average consumer would not place any trade mark significance on the “fancy” edging of this basically round cheese. This is because the curves appear decorative and designed to give the individual slices of the cheese an attractive rounded end when the cheese is sliced into sections for sale. However, no Section 3(2)(c) objection was raised because, although attractive, the shape was not considered to give substantial value to the goods.

The shape of the ornamental lamp shown below appears to add substantial value to the goods and was objected to under Section 3(2)(c) on this basis:

Although it is an unusual shape for a lamp, the novelty of the shape appears to be attributable to its purpose as an ornamental lamp rather than as an indication of its trade source. Applications of this type are therefore also liable to face objections under Section 3(1)(b) and (c) because the shape is characteristic of ornamental lamps.