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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.

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