IP advice: The shape of things to come?

Both rights provide valuable protection for a substantial period (usually 20 years for patents; up to 25 years for designs). What many design engineers may not appreciate is that it is also possible to protect three dimensional shapes as trade marks – and trade mark registrations can, potentially, last forever. It has been possible to register shapes as trademarks within the UK and EU for nearly 20 years, although it can be a difficult endeavour. All registered marks must be distinctive of the goods/services in relation to which they have been registered – capable of distinguishing them from those of third parties. For Shape Marks there are additional requirements, to prevent products being the subject of a perpetual monopoly when their patent/design protection has expired. Any mark which consists exclusively of a shape required to obtain a technical result may not be registered (patents should be used instead –because the well known shape of a LEGO brick had previously been protected by patents, that assisted the highest Court in Europe in invalidating a trade mark registration for the shape – and any mark consisting exclusively of a shape which gives substantial value to goods will also be excluded (if it's aesthetically pleasing to look at, use design protection instead). Assuming that a design engineer's new creation does not fall into such excluded categories, it may be possible to obtain registered trade mark protection in the form of a 3d Shape Mark. As noted, all registered marks must be distinctive of the owner, capable of distinguishing its goods/services from those of competitors and act as an indication of trade origin. Traditionally, European Courts have taken some convincing that consumers can identify shapes as origin indicators. The owner of a Shape Mark must usually prove they have used the mark to such an extent that it has become distinctive of their goods/services. An important element here is that the shape in question must generally depart significantly from the norm or customs of the relevant industry sector. Hence the owners of the MAGLITE torch could not register the shape of the product as a trade mark because – as recognisable as MAGLITE torches may be – their shape is much like any other torch. Ultimately, members of the public at whom the product is directed must – without analytical examination – immediately and with certainty distinguish goods of the shape in question from those of another commercial origin. Although this can be a difficult hurdle to overcome – and substantial evidence of use as a trade mark is usually required – it is far from impossible and the reward of a potentially ever lasting monopoly right is likely, in many instances, to outweigh the costs that may be involved. One of the better known Shape Marks accepted for registration is the distinctive front grille owned by Daimler Chrysler and used in relation to its JEEP brand of vehicle. The relevant Court held that grilles have become an essential part of a vehicle's appearance and a means for consumers to differentiate between models. Although grilles perform a technical function in providing engine ventilation, they can also distinguish vehicles as trademarks – the JEEP grille was deemed to be an unusual design and not commonplace at the date of application, and was therefore accepted for registration. A less well known Shape Mark that has been accepted for registration is the following, registered for pipe junctions, fittings and couplings. The owner convinced the relevant authorities that this shape was sufficiently distinctive to operate as a trade mark, indicating commercial origin – and has been granted a potentially perpetual monopoly for the shape across the whole of the EU for those goods. The take home message? If you design a product that has a distinctive shape, be sure to speak to a trade mark specialist (as well as your usual patent/design attorney contacts) to see if it may also benefit from protection as a registered mark. Further detailed information is available in the knowledge bank or by contacting a partner at D Young & Co LLP. Both can be found at www.dyoung.com.