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What is a shape trademark and how does it differ from a design?

A shape trade mark is a trade mark which consists of three-dimensional shape used to distinguish the goods of one trader from the goods of other traders. The ability to distinguish the goods or services from those of other traders is key to any sort of trade mark, as that’s precisely what a trade mark is – a sign (which can include shapes) that distinguishes one traders’ products or services from others.

There are various shape trade marks registered in Australia, including some well-known trade marks. Probably the most well-known shape trade mark is famous Coca-Cola contour bottle. Others include the shape of the Weber barbecue and the shape of the Toblerone chocolate bar.

Whilst not available in all countries, the Weber barbecue shape is an example of a functional shape, because it serves a purpose. However, in those sorts of circumstances, if you file an application for a shape trademark, you may well get an objection from the examiner saying that your shape is one that other traders would wish to use for the same sort of product or to serve that known function. It’s possible to overcome that kind of objection, but only if you’ve been using your shape as a trade mark for a decent period of time, and you can prove that through evidence.

That does bring up the question though, of how a shape functions as a trade mark. In other words, how do consumers know when they’re presented with a shape that it’s actually a trademark, and that it’s designating the goods of a specific trader and no other trader? In some cases, it can be quite clear. For example, you see product that’s sold in packaging, or that is a shape that is very distinctive and unusual for the goods.

For example, we associate the shape of the Toblerone chocolate with that chocolate alone. However, even in that case the owners had to prove the shape could distinguish their chocolate from other chocolate bars. Another example, we are aware of a bubble bath product for children that is in the shape of a hippo. This would not be a common shape for a bottle for bubble bath and could service to function as a trade mark for that product.

Whilst a lot of products do have distinctive looks not all register shape trade marks. Think about cars – a lot are immediately recognisable such as a Lamborghini or Aston Martin. Not too many have registered their car shapes as trade marks. The Volkswagen Kombi van shape is one of few registered in Australia for vehicles. So whilst others have not taken the step to register their distinctive shapes as trade marks they may not need to in view of their notoriety, so their reputation. You immediately know upon seeing a Lamborghini, without seeing the badge that it is indeed Lamborghini. And likewise for a Porsche and for an Aston Martin. They may not need to register those shapes as trademarks for the simple fact that they have such a reputation, such a global reputation that consumer law and indeed even the common law trade marks would protect them. A common law trade mark is essentially one that can be enforced without registering. It’s just so well-known, so there would be an action for passing off if somebody tried to sell something that looked just like a Lamborghini or an Aston Martin without the badge. They could say, “Well hey, that’s misleading and deceptive. And B, that’s passing off.”

In any case, key to successfully registering a shape trade mark is that it is capable of distinction, either on the fact of it because it’s so unique or because the trader has made such use of the shape it has become recognised as their trade mark. A particular shape that is already in common use in the trade will not be registrable as a trade mark, no matter how much you use the shape. An example of that would be the shape of a tennis ball or the standard shape of bottle of wine. No matter how much you might use and promote a tennis ball or a bottle of wine, it’s never going to be sufficient in showing that shape functions as a trade mark for your goods alone; that it has become distinctive to your business to the exclusion of others.

Designs are treated separately to trade marks. A design consists of the overall appearance. And that can include more than just the shape. That might also include surface patterns and ornamentations, configurations, different parts, whatever is seen to give the overall visual appearance. The purpose of design registration is not necessarily around that design serving to distinguish one person’s goods from another trader’s (as is the case with shape trade marks) but to protect that overall appearance of the product.

Another distinguishing point between shape marks and designs is that a design by its very nature has to be entirely novel and distinctive at the time of filing. This means that even the owner cannot have had it out in the public domain before filing it. Whereas with a trade mark or a shape mark, there is no ‘newness’ requirement so it does not matter if you promote that shape before filing an application for a shape trade mark.

Given that to secure a valid design protection the design has to be new or novel you need to get that application filed as soon as possible, and absolutely before you launch and before you disclose it to the public. That’s just one way in which the design system varies significantly from the trademark system.

That being said,  it’s possible for the owner of a registered design to seek to obtain separate protection for the design, insofar as it might be a shape, as a shape trade mark. A main advantage of trying to register a design as a shape trade mark, assuming it’s not purely functional, is that trade mark registrations can be renewed indefinitely. Every 10 years you can renew your trade mark registration. Whereas, if you have a design registration, it lasts a maximum 10 years and then that’s it. Time’s up. Once that design expires you cannot take steps to prevent others copying your expired design.

If the design is particularly distinctive in its shape, registering the shape trade mark as well as the design (or at least before the design expires) can provide ongoing protection to some degree after the design rights cease.

In conclusion, if you have created a product that is distinctive in look/appearance and/or shape you should consider whether there is a need to register that product as a design and/or a shape trade mark. Certainly, if you have not launched yet you will need to consider design protection before disclosing your design to the public. If you have launched such that design protection is no longer viable, consider a shape trade mark as a strategy for protecting your intellectual property.

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