You know it when you see it – Shapes as trademarks

What is a shape mark?

Shape marks or three-dimensional marks are trademarks consisting of a three-dimensional shape. By registering a shape mark, the appearance of a product can be protected if it is capable of distinguishing the goods or services of one undertaking from those of others (=acting as a trademark). You will likely recognise the following shapes as indicating products originating from a certain company:

EUTM 000031237

EUTM 000137406

AT 279975

Protectability of shape marks

Every physical product has a shape, but not every shape can act as a trademark.

According to EU case law, a shape is protectable as a trademark if it departs significantly from the norm or from the customs of the sector concerned. In such a case it is recognised as a trademark, i.e. as an indication of origin.

If, on the other hand, the shape is rather common, the applicant must prove that due to intensive use the relevant public has learned to recognise it as an indication of origin (so-called acquired distinctiveness or secondary meaning). The European Union Intellectual Property Office (EUIPO) considered such a proof of acquired distinctiveness necessary for the following rather common, but due to the use distinguishable, shape of a bass or guitar head:

EUTM 003318474

It should be noted at this point that trademarks which consist exclusively of shapes of goods that are necessary to obtain a technical result are excluded from trademark protection under all circumstances, even if they have acquired distinctiveness through use.

Representation of the shape

According to EU case law, a trademark must be presented on the register in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner. The competent authorities and the public must be able to determine with clarity and precision the subject matter of the protection afforded to the trademark owner. 

Thus, before registering a shape mark, representations should be arranged that wholly and accurately reflect the shape. Today's multimedia registers allow for different types of representations (depending on the register) such as photos, graphic representations/sketches or 3D models (X3D).

If a representation contains elements for which no protection is claimed, applicants may disclose this by depicting such elements in broken lines. 

Additionally, Austrian and EU trademarks can also be given descriptions (e.g. to explain the illustrations).

Technical requirements within the Austrian and EU application process

Currently, the Austrian Patent Office only accepts digital submissions for shape marks if they come in JPEG file format. The maximum file size is 2 MB. Applications may also be filed in paper format, in which case six identical mark images on paper (max. size: 8 x 8 cm side length) must be submitted.

The EUIPO accepts submissions in JPEG, OBJ, STL and X3D file formats. The file size must not exceed 20 MB. To ensure a complete view of the mark, up to six perspectives of the same shape may be submitted in a single JPEG file (or in hard copy on an A4 sheet).

Summary

Shapes may serve as an indication of origin and distinguish products from one undertaking from those of another. When looking at a store shelf, consumers sometimes recognise the shape of a product much earlier than its label. Shape marks are a good option to protect product designs, packaging and containers in Austria and the entire European Union. Assessing whether the shape is protectable as a trademark and choosing appropriate representations are extremely important when registering this type of mark.