One of the forms of a trademark more and more frequently encountered in trading is that of the shape mark.
Definition of a mark
The forms in which trademarks can be presented have evolved as society has developed. Initially, graphic marks (images) were used, such as simple compositions of lines, monograms and pictures. Later, word and word-figurative marks became increasingly important, followed by colour schemes and audio marks. Pursuant to Article 120 par. 1 of the Industrial Property Law, any sign that can be presented graphically can be a trademark, provided that the sign serves to distinguish the goods of one manufacturer from those of another. The signs specified in Article 120 par. 2 IPL, such as graphs, drawings, ornaments, colour schemes, shape forms, including the form of a product or packaging, and melodies and other audio signals, comprise an open catalogue of the types of trademarks for which protection can be sought. The examples given in the list are only for the purpose of illustrating the concept of a mark.
Submission of a shape mark
Shape marks, especially three-dimensional shape forms, including the form of goods and packaging, are one category of non-conventional visible marks. They may be a form that is purely fanciful but has utility value in practice. Shape marks presenting various forms of goods and packaging should be depicted graphically in the form of photographs or prints that render the mark in perspective.
Submissions are sometimes made of three-dimensional forms depicted in two dimensions. When a trademark is a shape mark, it must be illustrated in the form of a perspective drawing illustrating its overall appearance or by means of several drawings placed alongside one another if the distinguishing features of the form occur on different planes.
Shape marks cannot always be distinctive enough for the goods they designate. Where there is an insufficient number of graphic or word elements, the average consumer will not normally draw any conclusions about the origin of goods just from their form or the form of their packaging, which is why it can be more difficult to establish whether such a three-dimensional mark is distinctive than in the case of a word or graphic mark. When submitting a three-dimensional mark, it is worth gathering documents that confirm the secondary distinctiveness acquired by the long use of the mark in trading.
Exclusions from protection
The form of goods or packaging is often conditioned by the manufacturing process, means of use or features related to proper functionality. A protection right to a trademark does not give a monopoly over the form of objects where these are solely functional features. Shape signs that constitute a form or other property of a product or packaging that is determined solely by the nature of the product, that is necessary to obtain a technical effect, or that is meant to increase the value of a product are excluded from being protected. This does not rule out, however, the possibility of protecting these by means of a patent, a protection right to a utility design or a right deriving from the registration of an industrial design, provided that they meet the relevant statutory requirements.
In a time of increasing competition on the external market, the appearance of a product, and particularly its form, is becoming an important element of the business strategy of every company. However, appropriating the form of a product by registering it as a trademark must be justified, since typical forms must be available to a wide spectrum of producers.
The form of a product, registered as a trademark, should be such as to make it possible for consumers to distinguish that product from other goods due to its particular form. In practice, most trademark submissions presenting a shape form are for bottles, perfume bottles and food product packaging.
This article was published in the daily newspaper Rzeczpospolita on 21 July 2017 under the headline “Bottles and boxes – three-dimensional marks”.