The shape of your trade?
Think about the great function carried out by trade marks. In one quick, fell swoop, a simple word implies any number of things: quality, tradition, comfort, stability, innovation. Words such as Apple, Nike, Ikea, Audi, Gucci stop being just names, and...
Think about the great function carried out by trade marks. In one quick, fell swoop, a simple word implies any number of things: quality, tradition, comfort, stability, innovation. Words such as Apple, Nike, Ikea, Audi, Gucci stop being just names, and are names recognised by most of the population. And this is essentially the raison d'être of a trade mark: to pass on a message to the person seeing/hearing it about the identity of the source and to give that additional packet of information about the product itself.
In my last article I discussed the phenomenon of non-traditional trade marks. One other popular form of these marks is the "shape" mark. Textbook trade mark law reads that the shape of the goods or their packaging is the sort of graphical sign that can qualify for trade mark status. So, inspired by this, producers have succeeded in getting shapes on the trade mark registers of many countries and of the Community. A popular example is the shape of the Coca Cola bottle. Not only is the shape known and appreciated by all, but the public can also identify it as a Coca Cola bottle and not any other bottle when they see the bottle even if empty, and stripped of its colours and of the information sleeve. Similarly, Toblerone have a Community trade mark for the shape of their triangular chocolate bar. And Porsche has registered the shape of the Boxster. This is quite a feat, because it means that average customers when presented with the silhouette of the object, void of any other marks, colours or tell-tale signs, can correctly identify the origin of the goods.
Consumer recognition is the best tool to get non-traditional marks onto the books. Companies invest years of advertising, "teaching" the public that when they hear that jingle, see that shape or see that colour then it must only mean that that is their product. It is consumer education at its best, nurturing an association between the sign and the trade mark associated to it. A success story highlighting the importance of consumer education and the weight it is given by the courts is in the string of Adidas cases. Adidas sued various producers who would put two or four stripes down the side of their garments. At first, the courts decided against Adidas, saying that Adidas could not stop others in the sector from using, in the court's words, a "purely decorative motif" - i.e. stripes. However, Adidas recently won its case against H&M, with the European Court of Justice recognising the degree of similarity between the sign (stripes) and the trade mark (Adidas) and the ease with which the similar sign may be associated with the original mark, having particular regard to the recognition of the mark as one which enjoys a reputation. The evolution in consumer education therefore gave Adidas a stronger armour.
At the end of the day, a trade mark is an exclusive right. It creates a legitimate monopoly to use that name, colour or sound for that category of goods or services.
Nobody else can use it unless it is subsequently struck off the register or becomes generic (think of the former trade marks Hoover and Biro which have now become part of our vocabulary).
Right-holders are therefore expanding their monopoly and the scope of protection for their products. Recently Apple successfully registered the shape of the Ipod as a trade mark in the US. Apple's Ipod is protected by a great number of patents for the various components and technology used in them, and the design of the product is also protected by design rights. The "problem" is that patent rights and design rights last a "few" years. To be precise, patents last 20 years both in the US and the EU; while design rights last for 14 years in the US; in the EU they have a duration of five years, renewable in five-year blocks until a maximum of 25 years for registered design rights and three years for unregistered design rights.
Registered trade marks on the other hand last for 10 years but can be renewed ad infinitum, as long as the renewal fees are paid and the mark is used. There therefore cannot be a more valuable asset. Trade marks protect brands and goods, and are used to fight copyists when other forms of protection "die out".
Of course, this pushes the limits of free competition to an extreme because certain signs cannot be used by other producers in the relevant category of goods or services. Intellectual property rights, being monopolies, place a lot of responsibility on the shoulders of examiners in every registry, who determine whether the sign sought to be registered is truly the mark of one's trade or, in this case, the shape of one's trade.
• Dr Rizzo is an associate with Fenech & Fenech Advocates.
In my last article I discussed the phenomenon of non-traditional trade marks. One other popular form of these marks is the "shape" mark. Textbook trade mark law reads that the shape of the goods or their packaging is the sort of graphical sign that can qualify for trade mark status. So, inspired by this, producers have succeeded in getting shapes on the trade mark registers of many countries and of the Community. A popular example is the shape of the Coca Cola bottle. Not only is the shape known and appreciated by all, but the public can also identify it as a Coca Cola bottle and not any other bottle when they see the bottle even if empty, and stripped of its colours and of the information sleeve. Similarly, Toblerone have a Community trade mark for the shape of their triangular chocolate bar. And Porsche has registered the shape of the Boxster. This is quite a feat, because it means that average customers when presented with the silhouette of the object, void of any other marks, colours or tell-tale signs, can correctly identify the origin of the goods.
Consumer recognition is the best tool to get non-traditional marks onto the books. Companies invest years of advertising, "teaching" the public that when they hear that jingle, see that shape or see that colour then it must only mean that that is their product. It is consumer education at its best, nurturing an association between the sign and the trade mark associated to it. A success story highlighting the importance of consumer education and the weight it is given by the courts is in the string of Adidas cases. Adidas sued various producers who would put two or four stripes down the side of their garments. At first, the courts decided against Adidas, saying that Adidas could not stop others in the sector from using, in the court's words, a "purely decorative motif" - i.e. stripes. However, Adidas recently won its case against H&M, with the European Court of Justice recognising the degree of similarity between the sign (stripes) and the trade mark (Adidas) and the ease with which the similar sign may be associated with the original mark, having particular regard to the recognition of the mark as one which enjoys a reputation. The evolution in consumer education therefore gave Adidas a stronger armour.
At the end of the day, a trade mark is an exclusive right. It creates a legitimate monopoly to use that name, colour or sound for that category of goods or services.
Nobody else can use it unless it is subsequently struck off the register or becomes generic (think of the former trade marks Hoover and Biro which have now become part of our vocabulary).
Right-holders are therefore expanding their monopoly and the scope of protection for their products. Recently Apple successfully registered the shape of the Ipod as a trade mark in the US. Apple's Ipod is protected by a great number of patents for the various components and technology used in them, and the design of the product is also protected by design rights. The "problem" is that patent rights and design rights last a "few" years. To be precise, patents last 20 years both in the US and the EU; while design rights last for 14 years in the US; in the EU they have a duration of five years, renewable in five-year blocks until a maximum of 25 years for registered design rights and three years for unregistered design rights.
Registered trade marks on the other hand last for 10 years but can be renewed ad infinitum, as long as the renewal fees are paid and the mark is used. There therefore cannot be a more valuable asset. Trade marks protect brands and goods, and are used to fight copyists when other forms of protection "die out".
Of course, this pushes the limits of free competition to an extreme because certain signs cannot be used by other producers in the relevant category of goods or services. Intellectual property rights, being monopolies, place a lot of responsibility on the shoulders of examiners in every registry, who determine whether the sign sought to be registered is truly the mark of one's trade or, in this case, the shape of one's trade.
• Dr Rizzo is an associate with Fenech & Fenech Advocates.