There are a few things to bear in mind when considering registering a shape as a trade mark.

Late last year, we commented on things to consider when registering a colour as a trade mark in Australia. Non-traditional trade marks such as shapes, smells and sounds are back in the news with the English High Court yesterday dismissing Nestle’s appeal against a decision to refuse to register the 3D shape of the four-finger Kit Kat chocolate bar as a trade mark. The decision follows input from the Court of Justice of the European Union on three questions relating to the factors to be considered when determining the distinctive character of a trade mark.kitkat nestle

Essentially, the appeal was dismissed because Nestle did not establish that “… a significant proportion of the relevant class of persons perceives the goods … as originating [from Nestle]” and that “it is likely that a number of similarly shaped products have been produced by other companies but which consumers have not necessarily recognised as being Kit Kats”. Needless to say, Nestle doesn’t agree with the decision and is disappointed given it considers the shape of the four-fingered Kit Kat chocolate to be well known and iconic and that it deserves to be protected as a trade mark.

A check of the Australian Trade Marks Register confirms that the shape is registered as a trade mark but only after Nestle provided evidence of use. This established that the shape was distinctive on the date that the application for the trade mark was filed.

So, here are a few things to bear in mind if you are thinking about registering a shape as a trade mark in Australia:

  • Don’t choose a shape that is common to the trade for example, a standard wine bottle for wines or the shape of a rabbit for Easter chocolates;
  • Don’t try and register a shape that has significant functional features in relation to the goods. Functional features are those that are essential to the use or purpose of the goods, that are necessary to achieve a particular technical result or that has an engineering advantage or, that can be simply manufactured at low cost;
  • Decorative shapes of jewellery will usually be difficult to register because it is common in the jewellery business for the designs to include unusual or imaginative shapes;
  • You will need to provide descriptions and representations of the shape, or perspective and isometric drawings if possible, that clearly shows each feature of the mark to allow proper examination;

If you try to register a shape that includes one or more of the above features, it is likely that you will need to provide evidence of use to demonstrate acquired distinctiveness through use before the trade mark will be allowed registration as a shape. In some cases, as with Nestle’s shape mark, only evidence of use before the filing date of the application might be allowed to demonstrate that, through use over a sustained period of time, consumers recognise the shape as a trade mark. As with colour marks, the Examiner will want to see that you have made special effort to educate consumers that you are using the shape as a trade mark for the purpose of distinguishing your goods from those of your competitors.

As they say, the early bird catches the worm or gets their shape trade mark registered.

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