Shape trade marks. Part 2: Changing the silhouette of shape trade marks in Australia.

1. What is a shape trade mark?

In part 1 of this series, we discussed the opportunity for perfume companies to protect their uniquely designed products, including their perfume bottles. In this part 2, we will look more specifically at shape trade marks – which are 3-dimensional shapes that distinguish one trader’s goods or services from another’s.

2. Criteria for registering a shape trade mark

To support an application for a shape trade mark, an applicant must demonstrate that the product’s shape satisfies the following 2 criteria:

(a) Capable of distinguishing: Like all trade marks, the shape needs to stand apart from competitors and act as a badge of origin. Our trade marks lawyers can assist to check whether your shape is already covered by an existing trade mark.

(b) No commonality: The trade mark can’t be a common shape in its industry as it would be unfair for one business to control a common shape.

3. Why have shape trade marks been hard to protect?

In the past, it has been difficult to register trade marks for shapes because:

• the shape often depends on the product’s function; and
• the shape is a fundamental part of the product.

For example, you can’t get a shape trade mark for common shapes needed in trade, like a shoe box for shoes, or a wine bottle for wine.

In the landmark Remington shaver case[1], the Federal Court held that Philips’ use of the same triple head shaver shape (see Diagram 1 below) as Remington’s trade mark (see Diagram 2 below) wasn’t trade mark infringement, as Philips used that shape for a specific function, not as a trade mark.

Diagram 1 :                                                                              Diagram 2:

The Philips v Remington case has had a significant impact on legal decisions regarding shape trade marks. It established that a shape must be more than just functional to qualify as a trade mark and must serve as an indicator of commercial origin. Over the last 2 decades, this case has influenced how courts assess the distinctiveness and registrability of shape trade marks, setting a precedent for future cases.

4. Shape trade marks bucking the trend in Australia

In recent years, many shape trade marks have been registered in Australia, including the following:

(a) the Sydney Opera House sails:

(b) Ferrero Rocher chocolate box:

(c) the Frank Green water bottle

5. The right path for legal protection

Trade mark registration offers many benefits to business owners which derive from the statutory monopoly that registration provides. If, however, your product has a unique shape, you should also think about registering it as a shape trade mark to protect your intellectual property.

If you need any assistance in considering whether a shape trade mark may be available for your product, contact our team of experienced trade mark lawyers at trademarks@bespokelaw.com or +61 (0) 3 9967 5344.

[1] Koninklijke Philips Electronics NV v Remington Products Australia Pty Limited [2000] FCA 876