A recent Hearing Office decision of the New Zealand Intellectual Property Office has highlighted the difficultly of registering non-traditional trade marks, such as shape marks and colour marks.
Kellogg’s applied to register the shape (rectangles with three holes in them) of its NUTRI-GRAIN cereal as a shape trade mark:
During examination the shape trade mark was objected to on the basis that it was non-distinctive, however Kellogg’s successfully provided evidence of use to establish that the cereal shape had become distinctive. Nestle subsequently opposed registration of the cereal shape.
The primary issue in the opposition was whether Kellogg’s evidence established that the cereal shape had become distinctive in its own right. The Hearing Officer noted that the cereal shape had been used since the 1980s and that sales figures and marketing expenditure for NURTI-GRAIN cereal were substantial. The Hearing Officer note however that representations of the cereal shape were generally used in close proximity to the well-known trade marks KELLOGG’S and NUTRI-GRAIN and that the evidence did not establish that the cereal shape itself is used in a way that would be recognised as a badge of origin. The Hearing Officer also noted that while sales figures and marketing expenditure for NUTRI-GRAIN cereal was high, the extent to which sales and marketing promoted or reflected the shape of the cereal as opposed to simply the cereal product itself was unclear. The Hearing Officer also stated that the lack of independent evidence, for instance from people working in trade, counted against Kellogg’s. Registration of the cereal shape was accordingly refused on the basis that it was not distinctive.
The decision highlights the difficulty in establishing that shape marks and colour marks have become distinctive separate from the primary word trade mark they are used with.
If a shape mark or colour mark is an important brand asset, it should be promoted as an individual branding element to highlight that it is an individual trade mark. This will assist with registering and enforcing shape marks and colour marks.