The lesser spotted shape mark (Brands & IP Newsnotes - Issue 2)
28 March 2016
A picture says a 1000 words or so the saying goes. So what about a shape? Several recent decisions have underlined the difficulties that can arise in trying to use shapes to protect a brand.
Give me break…
Nestlé’s has failed to register the shape of its four fingered Kit-Kat bar as a trade mark. In January this year (applying a test laid down by the European Courts which was at least partly lost in translation) the High Court ruled that the four fingers had not acquired distinctiveness through use and that consumers do not rely on the shape to identify the origin of the product.
Only a week or so later, Arnold J ruled again; this time in relation to the shape of what some might call the ‘iconic’ London taxi. Applying the same principles that he had done in Kit Kat, Arnold J declared several trade mark registrations for the shape of the London taxi invalid. They should not have been registered in the first place; they were not distinctive; and people did not identify the shape as an indication of origin.
Message in a bottle?
Fast forward a matter of weeks and it was the turn of Coca Cola. The General Court of the European Union refused their applicationto register as a trade mark the shape of its newer bottle design. Coca Cola has previously registered the shape of its bottle with fluting but its attempts to register the contour bottle fell flat. The Court did not accept that it was a further iteration of the registered bottle worthy of protection. On the contrary, it was a “mere variant of the shape” of a bottle which was notsufficient to enable consumers to distinguish Coca-Cola’s goods from those of others.
Shapes can act as an indication of origin and can be valid trade marks. But it’s not always straight-forward.
This article was published in the Brands & IP newsnotes publication - issue 2.
‘Glee’ less than happy after trade mark strife (Brands & IP Newsnotes - Issue 2)28 March 2016
We’re all familiar with the classic trade markdispute. But can you sue for trade markinfringement if the brand using your name is actually more famous than your own? In February, the Court of Appeal said you could.
Trading secrets safely in Europe (Brands & IP Newsnotes - Issue 2)28 March 2016
In December 2015, while most of us were busy wrapping presents and eating mince pies, the representatives of the European Parliament and Council agreed the text of the Trade Secrets Directive.
Stop monkeying around (Brands & IP Newsnotes - Issue 2)28 March 2016
A judge in California has put a stop to all the monkey business surrounding the idea that animals can own copyright, in California at least.
Play those bars again and end up behind… bars (Brands & IP Newsnotes - Issue 2)28 March 2016
The High Court has handed down a custodial sentence of 28 days for breach of an injunction against copyright infringement, albeit suspended for a period of 18 months. Two points rang out.
To register or not to register… that is the question (Brands & IP Newsnotes - Issue 2)28 March 2016
Just because you can register your intellectual property, it doesn’t mean that you should. Sometimes attempts to register can have unintended consequences, as YouTube stars, the Fine Brothers, recently found out.
Kylie v Kylie (Brands & IP Newsnotes - Issue 2)28 March 2016
It isn’t often that trade mark oppositions receive mainstream media attention. Kylie Minogue has bucked that trend by filing an opposition to reality TV star Kylie Jenner’s trade mark application for ‘Kylie’ in the US.
But we settled that! (Brands & IP Newsnotes - Issue 2)28 March 2016
Parties will understandably often be relieved to sign on the dotted line of that “full and final” settlement agreement. But two decisions of the High Court earlier this year may give pause for thought. What is the practical effect of such a settlement and is it really what the parties want?