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3D Trade Marks

Many people are aware that it is possible to register a trade mark in the form of a name or logo; but, for some companies the shape of their product also acts as a trade mark.

For example, Coca Cola have successfully registered the shape of their glass bottles, and the recognisable shape of the Rubik’s cube is protected.

However, in some cases protection is not obtained as easily as you might think.

Nestle have recently failed to obtain a registered trade mark for their four fingered KitKat bar in the UK (reported here). Whilst many people would instantly recognise the shape of the chocolate bar as a KitKat, the courts made it clear that Nestle had to show that it was the shape alone that allowed customers to identify the chocolate bar. Of note was the fact that the chocolate bar was only ever sold with the KitKat name moulded into the chocolate and on the wrapping of the chocolate bar.

A trade mark registration can give the owner a monopoly right over that trade mark for ever, as long as the registration is maintained.  In relation to 3D shape marks, it is, therefore, important that such a registration is only granted in circumstances that do not give one person or company a monopoly over a shape that should be available for others to use in commerce.

As well as the 3D shape having to be distinctive and providing a badge of origin of the goods (i.e. a customer can identify the product or company purely from the 3D shape), a number of other key hurdles are in place to limit the registration of 3D shapes as trade marks.

A 3D shape cannot be registered if the shape arises from the technical function of the object or when the shape provides a technical function, for example the shape of a Lego block or a three-headed shaver. Furthermore, a 3D shape cannot be registered if the shape adds substantial value to the product, for example the cut of a diamond.

If, however, you are able to demonstrate that the 3D shape of a product acts as a trade mark, then registering this can be a valuable asset.

If you would like further information about registering 3D trade marks, or for any other trade mark advice, please contact one of our trade mark attorneys, Claire Freeman, Lynn Harris, and Alison Simons.

Jacqueline Holmes