You probably wouldn’t hesitate to protect your product’s original shape from copying, especially if consumers find it attractive. You can do this in a traditional and simple way, i.e. by registering a design of the shape. Alternatively, you can opt for a three-dimensional (3D) trademark registration, which is less popular and more difficult to get. An exclusive right to register a certain dimensional form as a trademark is rarely granted, as this registration would help you get a superior position against competitors. In other words, it would allow you to monopolise the 3D form of particular type of goods for unlimited time.
This type of monopolisation was practiced by LEGO, a Danish company known for toy manufacture. LEGO’s famous toy bricks and their interlocking ways were patented in 1958. After the expiry of a last patent, a lot of companies tried to take advantage of it and attempted to produce similar interlocking bricks. In order to avoid this, the Danish company registered their red LEGO brick as the 3D Community trademark. Their competitor, a Canadian company Mega Brand, did not accept this situation and sought to declare this registration invalid arguing it was contrary to the absolute grounds for refusal. The dispute was finally tackled by the European Court of Justice (CJEU) that ruled the judgement in favour of Mega Brand and declared the registration of LEGO bricks invalid. Under CJEU’s view, the registered shape of the brick, namely studs and holes to connect the toys were necessary to perform a technical function.
Another CJEU’s judgement should have eased LEGO’s situation. This decision is related to LEGO’s figures that the Danish company registered in 2000 as the 3D Community trademark. Their competitor Best-Lock applied for declaration that the mark was invalid giving the same argument: the shape of figures performs the technical function. But the CJEU ruled that the essential elements of the figures had nothing to do with the function to connect them to other building blocks and some of their characteristics, e.g. holes in feet, did not obviously perform the technical function.
Coming back to unsuccessful examples of 3D trademark registration we should mention food corporation Nestle attempting to protect the shape of a popular chocolate bar Kit Kat that consists of four chocolate wafer fingers. After CJEU’s judgement, Nestle will probably be challenged by their competitors copying the chocolate product, despite the fact that users associate this chocolate shape primarily with Kit Kat and their slogan “have a break, have a Kit Kat”. According to Advocate General of the CJEU, the court needs more substantial evidence proving that the trademark in question has a distinctive character; the fact the public recognises the shape is not enough.
One of the main reasons why marks are refused to be registered or why their registration is declared invalid is that they lack distinctive character. Case law shows that when the distinctiveness of the three-dimensional mark is assessed, it is difficult to fulfil this requirement due to CJEU’s strict behaviour in relation to 3D trademarks.
However, even the CJEU makes exceptions. For example, a decision in 2014 to register the design of Apple stores as the 3D trademark in Germany attracted a lot of attention. In this way the CJEU has broadened the concept of the 3D trademark, as earlier these trademarks were associated with goods exclusively, and never with the place of the services. It should be mentioned, nonetheless, that a lot of European national patent offices expressed contradict views towards this Apple’s request.
The registration of Apple store design is probably the best trademark example of this type in the IT field. We can only imagine what unusual trademarks we might see in the future as the concept of the modern mark is constantly changing. For example, in fashion, not only the design of a shop, but also smells and music in the shop may become trademarks, as these elements help the users to distinguish between services and goods.