When we think of a brand, names, logos, or slogans usually come to mind. But it is also possible to register the three-dimensional shape of a product as a trademark. This type of registration can turn the appearance of an object into a distinctive sign that identifies its commercial origin.
It is clear that three-dimensional (3D) trademarks can be a powerful tool for differentiating products in the market. Protecting the shape, packaging, or overall appearance of a product can become a very valuable strategic asset.
Even so, trademark law has specific limits on the registration of this type of trademark:
- The shape imposed by the nature of the product.
- The shape necessary to obtain a technical result.
- The shape that gives the product substantial value.
These absolute prohibitions on the registration of 3D trademarks are set out in both EU (Article 7.1.e) of Regulation (EU) 2017/1001 on the European Union trademark (EUTM)) and Spanish regulations (5.1.e) of Spanish Law 17/2001 on Trademarks) and obey a fundamental principle:
to prevent a company from obtaining an indefinite monopoly over technical solutions or essential characteristics of the product that should remain available to all market operators once the patent or design has expired.
For this reason, before filing a 3D trademark application, it would be necessary to determine the essential characteristics of the product’s shape and check whether they all serve a technical function. The steps to do this would be:
- Preliminarily analyze the purpose and essential characteristics of the shape: if it serves an essential technical function, registration as a trademark has little chance of success;
- Explore alternative rights: patents, utility models, and designs are suitable ways to protect technical or aesthetic elements, although they have a limited duration;
- Focus on distinctiveness: when the shape has non-functional or unusual elements that allow it to stand out in the market, it may have real options as a 3D trademark;
- In the case of simple shapes, analyze whether intensive use in the market has given the 3D trademark acquired distinctiveness. If so, and if this can be sufficiently demonstrated, the 3D trademark may have a chance of registration.
An illustrative example is the Lego brick case (C-49/08), in which the Court of Justice of the European Union (CJEU) confirmed the invalidity of the 3D trademark of the famous building block on the grounds that its shape was necessary to achieve a technical result (the interconnection of the blocks) and therefore could not be registered as a trademark.
The following 3D trademarks registered with the EUIPO are examples of success stories:
In summary, 3D trademarks can be a very valuable asset since they grant an indefinite monopoly, but legislators and case law have established clear boundaries to preserve competition: the “necessary shape” cannot be monopolized by a trademark.
Article by Menchu Pérez.
