Matt Sammon, Head of UK Trade Marks, Marks & Clerk
Registered trademarks are, for some advertising professionals, a nuisance and a hindrance when putting together advert designs, but for others, they provide a valuable tool for protecting goodwill built up in brands from counterfeiting and other kinds of free-loading. Some types of trade mark are more controversial than others, especially those considered “non-traditional” trademarks. Shape trademarks have recently hit the news again, with a decade-long battle over the registered trade mark protection for the shape of the Rubik’s Cube now set to come to an end.
A puzzling case
In 2006 Simba Toys, a German toy manufacturer, applied to invalidate a trade mark Rubik’s Cube’s owners (Rubiks Brands) held on its shape. Although the protection of the registered trade mark for the beloved cube’s shape was maintained by the EU IPO and the General Court of the EU, on appeal Simba Toys secured a decision in their favour from the EU’s highest court, the Court of Justice of the European Union (CJEU).
Whilst many grounds of attack were put forward by Simba Toys, the CJEU ruled on one specific issue concerning the functionality of the trade mark. A trade mark cannot be registered if it consists of a sign “which consists exclusively of the shape of goods which is necessary to obtain a technical result.” Rubiks Brands’ earlier success was based on the fact the “technical” elements were internal and that the exterior elements for which trade mark protection was granted served no technical function. However, the CJEU has now ruled that the registered trade mark does consist of a shape obtaining a “technical result”. This means the case is now remitted to the EU IPO, which is expected to apply the ruling and invalidate the registered rights.
Is the end in sight for shape trademarks?
Even though the Rubix Cube trade mark was consider unfit for trade mark registration, there are a multitude of companies that still enjoy trade mark rights over the shapes of their products, such as Kraft with the Toblerone shape and Coca-Cola with its distinctive bottle shape. These rights are extremely valuable in identifying the product and maintaining the exclusivity of design and reputation, but, with this Rubix Cube decision, there is now a danger of further attacks on such registered rights.
There appears to be a growing reluctance from trade mark offices to grant these wide monopolies to less traditional trademarks. However, readers should not think that this is the end for “non-traditional” trademarks. It is still possible to secure protection for elements beyond the traditional brand, and advertising professionals, marketers and product designers all need to take care not only to avoid infringing other brands’ trade mark rights in their work, but also, where possible, to ensure their brands are protecting the potentially valuable IP they are creating.
Trademarks working to enhance brand strength
In developing new products and marketing and advertising campaigns, it can make all the difference obtaining the right to prevent others from piggybacking on the development spend and goodwill created – which is what trade mark, patent and design rights can give you. So how can protect your ideas?
Firstly, as we know from the Rubik’s Cube case any product with an innovative technical function should be protected by a patent and/or design registration, not trade mark rights, and this needs to be applied for before the product is put into the public domain.
The purpose of trade mark protection is to identify the origin of the goods or services. As a marketer or advertiser, you need to identify what the key features of products or marketing campaigns are that resonate with consumers and allow them to associate those elements with a particular company and the values of that company. These are the elements of the campaign or design where care and consideration should be given to try and make them distinctive and serve as a trade mark. It may take a degree of education of the public to create that link, but this investment can be worthwhile when it allows a monopoly to create clear water between one company and a multitude of hungry competitors.
Slogans, icons , packaging, advertisements, moving images, colours, Twitter handles can all be protected, providing they are able to serve the overriding essential function of identifying the origin of the goods. The consumer needs to see that element and recognise the company behind it. It is not easy but it is possible and the positioning and presentation of a product can be key in allowing the protection of these elements with registered trademarks.
They need to be distinctive, innovative and not a mere descriptor. They need to have a link created with the company behind them and have this pushed into the consciousness of the consumer. This is where a company can start to secure a broad monopoly and gain a significant competitive advantage.
After all, even those companies like Rubiks Brands and Lego, which may have lost rights in recent times, have benefitted from a significant period during which they enjoyed a monopoly and generated substantial goodwill and sales.
As for where Rubiks Brands now stand, they still have trade mark protection on plenty of other elements of their brand. There are also other intellectual property rights they could possibly rely on. Copyright, passing off and unfair competition could all potentially be enforced against counterfeiters because they have spent a long time building up goodwill and brand recognition in their product and wider brand. However, as with most unregistered rights, these can prove a lot trickier to enforce than registered trademarks.