Pure 3D trademarks: a unique occurrence

According to European legislation, three-dimensional (3D) trademarks can be registered. However, day-to-day practice can be surprising. Once a 3D trademark passes the distinctiveness text, the exceptions laid down in the law will be lurking. For instance, is shape determined by the nature of the product, or does shape give products substantial value? Therefore, registering a pure-form trademark in Europe is rare.

Criteria for trademarks
A trademark must distinguish – in other words, it must identify the products for which registration is requested as the products of a certain company. If people's first experience of a product is good, people will buy it again; if they have a bad experiences, they will choose an alternative next time. The public need not necessarily perceive the mark as a trademark.

The distinctiveness of trademarks must always be judged in light of the goods or services for which the trademark is registered. This applies not only to word marks, but also to shapes and colours.

Whether a trademark is distinctive depends on how it is perceived by the relevant public. Usually, the customers are averagely informed, cautious and observant ordinary buyers of the products or services in question. In most cases, they will perceive a trademark as a whole product without paying attention to detail. Therefore, in order to decide whether a sign is distinctive, the overall impression must be studied.

Criteria for 3D trademarks
The aforementioned criteria apply to 3D trademarks. However, applying these criteria does not mean that the same results can be taken for granted. Case law assumes that the perception of the relevant public can differ depending on the kind of trademark whose distinctiveness is being analysed.

In a decision regarding the shape of a flashlight (Mag Instruments) the European Court of Justice (ECJ) ruled that the relevant public’s perception of 3D trademarks was indeed different from its perception of word and verbal trademarks. According to the ECJ, if a graphic or textual element is lacking, the public is not used to deriving the origin of the product from its shape or packaging. In the case of a 3D trademark, determining distinctiveness could be more difficult than with word or verbal trademarks.

This difference stems from the fact that 3D trademarks usually represent a feature of the appearance of the product itself; this is not the case with word or verbal trademarks, which consist of signs that are separate from the goods that represent.

Case law
In case law, this different perception translates into the following test: only trademarks that significantly deviate from the norm or from what is common in the sector involved, and that therefore have an essential function in indicating the origin, are distinctive.

Various marketing surveys about packaging show that customers tend to remember the colour of the packaging first, followed by the shape (provided that it is distinctive) and then the logo or trademark. Companies invest heavily in product design because the shape clearly contributes to the product’s image. The sole purpose of this product development is to stand out from competition. This plays a much larger role in society than is suspected; as images and sounds continue to develop, we increasingly communicate using images and shapes.

This brings into question the court’s statement that the relevant public is not used to deriving the origin of products from their shapes or packaging if graphic or textual elements are lacking, and that as a result it is more difficult to determine distinctiveness than is the case with word or verbal trademarks. Rather, it seems that the public is now used to deriving the origin of products based on shape, provided that such shape is distinctive. The public perception may be different as long as different shapes or products are involved. For example, there is a difference between how the relevant public perceives consumer packaging and the shape of a guitar. To date, when it comes to perception, the court has thrown all designs in together.

Existing case law on the 3D trademark test is too limited and does not cover the actual situation.

Trademark offices
In practice, the 3D trademark test and how perception is phrased are causing official organisations to pursue strict policies when it comes to registering 3D trademarks. Whenever a 3D trademark passes the distinctiveness test, the legal restrictions for 3D trademarks are applied. These set down that the following may not be registered as a trademark:

• A shape that consists solely of the shape determined by the nature of the product.
• A shape necessary to reach a technical effect.
• A shape that adds significant value to a product. 

Based on the Bang and Olufsen decision, in which the shape of the well-known speaker was said to determine the value of the product, the legal exceptions soon present themselves. So if the "deviates significantly" test is passed, the deviation may not be such that it can actually determine the actual value or nature of the product. Therefore, only a very narrow basis remains for pure 3D trademarks.

Trademark registration
What does this mean in practice? Different 3D trademarks are registered with a graphic element. In such cases the shape distinctiveness test is not applied because the graphic element is already considered to be distinctive. However, the shape is registered and will be discussed if a conflict arises.

Future plans
The Max Planck Institute suggested a more flexible test for 3D trademarks, although it later dismissed this proposal because it would lead to too many registrations (and therefore numerous conflicts). Allowing a 3D trademark registration to be obtained easily by adding a graphic element did not appear to be a sensible solution. The institute's proposal was changed to demand the integration of 3D trademarks.

One alternative could be to use design law until such integration can be demonstrated. It seems strange that in order to obtain the same protection, first a particular law must apply and then the trademark right will be admitted – but only after major investment, as demonstrating European integration is quite a challenge. This does not acknowlegde the distinctiveness that shapes can have. Under such circumstances, pure 3D trademarks will be unique indeed.