CP9 provides guidance to trade mark offices when dealing with a shape mark containing other elements when the shape itself is not distinctive. In summary, a non-dinctinctive shape will be a distinctive shape mark when combined with a distinctive element (e.g text, logo). If a mark (M) comprises a is a non-distinctive shape N and several other elements (A, B, C) then the mark M = N + A + B + C will be distinctive if any of A, B, or C is distinctive. This logic is quite useful for trade mark registries attempting to determine whether a non-distinctive shape has been supplemented sufficiently to render the whole distinctive.
CP9 provides some instructive examples. This non-distinctive wide bottle may be registered as a shape mark provided that it is accompanied by a distinctive word mark. Similarly this non-distinctive memory chip may be rendered distinctive overall by the addition of a distinctive element. Such elements may be logos, colours, or position marks. (However, establishing that a colour mark or position mark is distinctive can be difficult in practice.)
So this solves a problem that trade mark registrars have in trying to determine if a shape mark is distinctive. But it creates some uncertainty for other users of the trade mark register. Trade mark applicants use the register to claim and validate their property rights and to make protection of those rights easier. Trade mark owners may rely on a registration when asserting claims before a court or when seeking enforcement. But they are not the only users of the register. Competitors may consult the register to determine their freedom to use certain signs. The trade mark register also serves society at large by allowing the free market to function more efficiently. This is its primary purpose, but is also the one furthest removed from policy makers.
When enforcing intellectual property rights or avoiding infringement of them knowing the precise scope of the property right is essential. The way in which shape marks may currently be registered serves the needs of the registrar and the trade mark applicant very well. But in muddying the waters it makes life difficult for competitors who cannot readily identify the precise scope of the trade mark right that is registered.
The EUIPO information page that explains the different kinds of marks provides three instructive examples. It is arguable that only one of these should be considered a shape mark. Ask anyone for examples of a product that can be identified by a shape alone and many will immediately identify the shape of a Coca-Cola bottle as signifying the origin of the contents. Coca-Cola could arguably be sold in bottles of any size and colour, without any text and consumers would be able to identify it as Coca-Cola. It is the quintessential shape mark. The scope of this trade mark is also very clear. It is clear that no one other than the owner can sell drinks in bottles of this shape. The shape alone is the trade mark. Another example is the shape of Toblerone boxes. Kraft Foods has secured a trade mark on the triangular shape alone, independently of any colours or text. This too is quite reasonable, and the scope of the trade mark is clear.
The other two examples provided by the EUIPO are somewhat confusing, and it is telling that from all of the shape marks on the EUIPO register, no better ones could be found.
Duracell has secured a trade mark registration for a black battery "with a copper coloured top", as the advertising slogan went. However anyone examining the register might be confused. Clearly no one can sell batteries of this shape with this colour. But does the registration preclude sale of batteries with this shape? Clearly it should not. The shape is a standard shape for all such batteries. A disclaimer in the registration excludes "The shape of the three-dimensional mark" from the scope of the registration. But this gives rise to the somewhat confusing paradox of a shape mark that explicitly disclaims the shape. Whatever the appropriate type of mark is for this registration, clearly shape isn't it. This is, of course, a colour mark. It is nothing more and, importantly, nothing less. The colour combination in the appropriate ratio is sufficient to identify the origin of the goods. Duracell should not have to file the obviously redundant registrations for other shapes of battery with the same colours.
It is not clear from the registration of the orange and red bottle which of the elements of the trade mark are being claimed by PVG Holding B.V. If I am selling similar goods can I sell them in a similar shaped bottle? If this is a shape mark then perhaps I cannot. Can I sell my goods in a differently shaped bottle, with identical colours, but without the happy couple? Of course, one could retort that for infringement (and indeed unfair competition / passing off) the overall impression will be considered by the yardstick of consumer confusion. But in most cases the right being claimed is a fixed point and the test is how close the competitor comes to it. Registering shape marks without making clear which elements comprise its essence means that the position of the reference point by which confusion can be measured is unclear.
The Duracell battery is, of course, an extreme example. Even in the absence of the disclaimer no reasonable person would expect that the scope of the trade mark included the shape. But what about shapes that inhabit the grey area between distinctive and not. CP9 provides trade mark offices that have determined that the shape alone is not distinctive a readily accessible mechanism for determining that the combination of the shape and word mark (for example) is distinctive. But once the mark has been registered there is no way for someone inspecting the register to know that the scope of the protection does not include the shape alone. The fact that the trade mark office considered the shape alone to be non-distinctive is not recorded. While it is easy to conclude that a standard wine bottle or battery is a non-distinctive element, the cases file of the EUIPO are awash with failed attempts to register shapes that applicants believed distinctive. The thin red line between distinctive shapes and non-distinctive shapes is in fact blurry, faint, and swiggly.
Perhaps the problem is that the shape trade mark has become a catch all category for marks comprising many elements. Packaging may include a word mark in a particular font and colour, packaging colour, and various graphical elements. It is reasonable for manufacturers to want to protect the sum of their branding elements, in addition to the individual parts. And it is possible that a combination of non-distinctive elements many be more than the sum of its parts and be distinctive. But classifying such compound marks and shapes, even when the shape is demonstrably not distinctive is far from ideal. Perhaps the solution is to provide a category of compound trade mark that allows various elements to be combined. The non-distinctive elements could be identified.
But there is a need for a distinct category of shape-only trade marks, just as there is for colours only. The current regime for shape marks is fudge. It serves trade mark registrars and applicants, but undermines the principle objective of the register and thus it's value. When the EUIPO's prime example of a shape mark has a disclaimer saying it is not a shape mark, something is wrong.
