Registering trade marks for product designs – Another red brick in the wall

September 27, 2010

In a competitive market setting your products apart from other people’s is key to maintaining an edge. Product design is often an important characteristic of a brand. It could even be the USP of the business.

Where, however, the function of a product dictates how the design is formed then Intellectual Property law provides few solutions, bar patents, to protect the design. In general, Design law is clear that it does not protect the functional elements of registered designs.

So, take for example a design of a new light bulb. The shape may be registerable in that it may display novel features or contours, but it would not obtain protection for the bayonet or thread solution, as that part of the design would be dictated by the function of connecting to the electrical socket.

Trade marks and designs
Although trade marks are not commonly associated with product designs, they can in fact be registered for shapes. Take, for example, the coca cola bottle this is a registered trade mark, or the Chiquita banana box.

Yet, again, the same principle of excluding functional shapes from protection is found in trade mark law and a recent decision of the Court of Justice of the European Union (CJEU) on the fate of the Lego brick strengthens this view.

Lego have been in a long standing dispute regarding their application for the red coloured brick. This case found its way to the CJEU which concluded that such a trade mark was not registrable.

This was due to the brick shape being a sign which was deemed ‘exclusively’ of the ‘shape of goods… necessary to obtain a technical result’ – one of the absolute grounds for refusing a trade mark.

In terms of what is exclusively a functional shape, the Court would look at its ‘essential elements’.

It was considered the ‘essential element’ of the lego brick to be the row of studs on the top side of the brick. This part of the brick was designed to achieve the result of interlocking with other bricks and on this basis the mark was refused.

If the shape had other elements which were aesthetic, “decorative or imaginative” and which played an “important role in the shape”, then there may have been a chance for the lego brick to be registered. However, the distinctive red colour for the bricks was deemed not significant enough.

 Limiting the role of trade marks
The rationale behind this somewhat restrictive stance for trade marks is to prevent trade mark owners from having a “monopoly over technical solutions or functional characteristics of a product” (see Philips judgment C-299/99, para 78).

Trade marks have a particularly wide scope of protection, as they extend their arm to prevent not only identical copying but also similar copying of a sign.

When applied to logos or words the impact is superficial. But when applied to shapes of products the impact could stifle competition within markets.

The registration of a red toy brick could hinder other toy manufacturers selling similar bricks to the market for better prices or providing better solutions to consumers. This would not be akin to promoting a “healthy and fair system of competition” – a prime consideration for the Court.

Trade marks as substitute patents
What also transpires in the reasoning of the Court is the desire to keep a clear demarcation line between patents and trade marks.

Patent rights last 20 years and are not renewable. Trade marks are renewable. To allow patented products to be trade marked without limitation could effectively undermine the credibility of the patent system.

In fact in identifying the ‘essential elements’ of the lego brick the previous Courts referred to the patents applied for by the owners.
There they found an overlap of the elements in both applications. The elements the owners sought to protect with patents were the same elements displayed in their trade mark application.

This finding was ‘practically irrefutable evidence’ of the functionality of the sign and of clear detriment to their trade mark application.

Product designs may be fine to trade mark, but beware of the limitations of this solution where the elements of shape are overly functional