Three-dimensional shapes must 'depart significantly' from the norm to merit trade mark protection, rules EU court

The EU General Court said it could "prove more difficult" for companies to win trade marks for shapes than other types of marks, like brand names.

Intellectual property law expert Iain Connor of Pinsent Masons, the law firm behind Out-Law.com, said the General Court's comments were not surprising but that it had, however, projected a view about the way consumers view three dimensional marks compared to two dimensional words and logos that has never been fully proven.

EU trade mark laws recognise that shapes or other signs capable of being represented graphically can qualify for trade mark protection if they are "capable of distinguishing" one company's goods or services from those of its rivals.

The legal test for determining whether there is a sufficient link between a mark and a brand to merit trade mark protection involves evaluating what the 'average consumer' of the type of product to which the mark applies perceives when they see that mark, such as a shape, relative to the other goods of that type in the market.

The average consumer is deemed to be reasonably well informed and reasonably observant and circumspect. If it is shown that a mark is devoid of any distinctive character in the eyes of the average consumer then it cannot be trade mark protected.

In a case involving Jaguar Land Rover, the General Court said that showing that shapes have distinctive character in comparison to other goods of their type is likely to be more challenging for companies than for other kinds of marks.

"Account must be taken of the fact that the perception of the average consumer is not necessarily the same in relation to a three-dimensional mark consisting of the appearance of the product itself as it is in relation to a word or figurative mark consisting of a sign which is independent of the appearance of the products it designates," the General Court said.

"Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or textual element, and it could therefore prove more difficult to establish distinctive character in relation to such a three-dimensional mark than in relation to a word or figurative mark," it said. "In those circumstances, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of [EU laws on Community trade marks]."

"Therefore, where a three-dimensional mark consists of the shape of the product in respect of which registration is sought, the mere fact that that shape is a ‘variant’ of a common shape of that type of product is not sufficient to establish that the mark is not devoid of any distinctive character.... It must always be determined whether such a mark permits the average consumer of that product, who is reasonably well informed and reasonably observant and circumspect, to distinguish the product concerned from those of other undertakings without conducting an analytical examination and without paying particular attention," the Court said.

Iain Connor of Pinsent Masons said: "While this case is not surprising what is surprising is the fact the General Court continues to perpetuate a statement of many moons ago that consumers regard three dimensional trade marks differently from words and 2D logos. There has never been any empirical evidence put before the court to substantiate this presumption which remains a huge barrier for those people seeking to protect anything other than a conventional brand."