Skip to main content

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

24 October 2016

Those looking to register shapes as trade marks have had a tough time of it recently. Attempts to register the shape of a Kit Kat, various bottles and a toothbrush have all recently failed in the UK and EU.

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

Related items

Related services

IPO doesn’t see anything wrong with Specsavers’ trade mark (Brands & IP Newsnotes - issue 3)

24 October 2016

Specsavers has managed to get its application to register “should’ve” (as in, “should’ve gone to Specsavers”) past the examination stage at the UK’s Intellectual Property Office (IPO).

Brand owners gain another tool in the war against counterfeits (Brands & IP Newsnotes - issue 3)

24 October 2016

Brand owners will welcome a ruling from the CJEU over the summer that an operator of a physical marketplace can be an ‘intermediary’ for the purposes of Article 11 of the IP Enforcement Directive.

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

24 October 2016

Those looking to register shapes as trade marks have had a tough time of it recently. Attempts to register the shape of a Kit Kat, various bottles and a toothbrush have all recently failed in the UK and EU.

Karen Millen - lessons from an SPA (Brands & IP Newsnotes - issue 3)

24 October 2016

Karen Millen, founder of the Karen Millen fashion brand has lost a High Court challenge to use her own name for homeware in the US and China.

Pay to play (Brands & IP Newsnotes - issue 3)

24 October 2016

Over the last few years, the Ministry of Justice has sought to fill the gap in its funding through repeated increases to court fees.

Pretty fly for wi-fi (Brands & IP Newsnotes - issue 3)

24 October 2016

Those who provide access to free wi-fi networks will be breathing a sigh of relief after the CJEU’s judgment this September that providers of such networks can benefit from protection under the E-Commerce Directive.

Hyperlinks – the saga continues (Brands & IP Newsnotes - issue 3)

24 October 2016

The CJEU has issued another judgment on copyright infringement and hyperlinking; this time in relation to linking to unauthorised content.

Back To Top