At present, the possibilities for distinguishing goods or services from one another by means of a trade mark are almost unlimited. Companies no longer exclusively use words or logos in order to distinguish their goods or services, but increasingly resort to shapes, packaging, colours or sounds ("non-traditional signs"). In this context, the question whether such non-traditional signs are eligible for trade mark registration is important. Here we highlight the two main obstacles encountered when registering a non-traditional sign as a trade mark.
A sign must have a distinctive character in order to be registered as a trade mark. In other words, the sign must enable the public to identify the goods or services of an undertaking as originating from a particular undertaking and to distinguish them from those of other undertakings. A sign can have a distinctive character by itself or through use ("acquisition through use"). If a sign is devoid of any distinctive character, the trade mark office will refuse the application for registration of the sign on absolute grounds.
Although non-traditional signs can have a distinctive character in theory, practice shows that such signs often encounter difficulties in overcoming this hurdle. The average consumer is not used to deriving the origin of goods or services from a non-traditional sign. Furthermore, an exclusive trade mark right on common colours, packaging or shapes can hinder competition.
For example, the applications to register Telenet's yellow colour trade mark, the shape of a cigarette packet and the shape of a Coca-Cola bottle without grooves as trade marks were rejected by virtue of this ground for refusal.
The case law of the Court of Justice of the European Union accepts that a shape or packaging can have a distinctive character by itself if it deviates significantly from the form common in the sector concerned. According to the Court of Justice and the General Court, colours can also have a distinctive character if the colour is unusual or striking for the goods or services concerned or if the colour does not constitute a mere decorative element of the goods or services.
Another frequently encountered ground for refusal for non-traditional signs is the rule that a trade mark application must be refused if the shape or another characteristic exclusively (i) results from the nature of the goods themselves, (ii) is necessary to obtain a technical result, or (iii) gives a substantial value to the goods (article 2.2bis.1,e) BCIP and Article 7(1)(e) Regulation on the European Union trade mark).
Amongst others, registration as a trade mark of the shape of the Tripp Trapp high chair, the shape of a Lego block and the shape of a Bang & Olufsen Beolab 8000 loudspeaker have already been refused or declared invalid by virtue of this ground for exclusion.
The ground for exclusion is not always easy to apply. This is evidenced, for example, by a recent decision of the General Court concerning the trade mark consisting of the shape of the Rubik's Cube (T-601/17):