Can you tell what it is yet? (Brands & IP Newsnotes - issue 3)

The test for the registrability of shapes as trade marks is the same as for any other mark, at least in theory. But in practice shapes have been more difficult to get through to registration - and if registration is achieved – to protect. So brands seeking to register shapes as trade marks have faced an uphill battle, and that hill appears to be getting steeper.

Perhaps the most difficult hurdle to overcome is that a shape must ‘depart from the norms and customs of the sector’, i.e. the particular shape of, for example, a bottle must differ significantly from others on the market. Or, in a case before the EU General Court recently, the shape of a toothbrush. The court decided that the shape of a toothbrush designed so as to minimise the possibility of it being used as a weapon in hospital and prison settings did not depart significantly from the norms of the sector. The court agreed with the EUIPO that the shape was immediately recognisable as a toothbrush and therefore shouldn’t be registered – despite the fact that a straw poll at Lewis Silkin HQ thought it looked more like a brush for animals or shoes. If this is the new test, it is difficult to imagine many shapes of products qualifying for registration if someone can immediately recognise what it is.

But all is not lost: If the shape has acquired distinctiveness through use (and advertising), it may have become sufficiently distinctive in the minds of consumers to warrant the grant of a trade mark. And there are always registered designs…

This article was first published in the Brands & IP newsnotes publication - issue 3.