Alex McDonald, Trade Mark Lawyer Auckland

Ask yourself, what do a milking machine tube, the sole of a Reebok trainer, a Wall’s Viennetta ice cream dessert and a section of Marley spouting all have in common? The answer? Each of these products has the protection of a shape trade mark registration for the shape of the product itself.

They are part of the vanguard of non-traditional marks formally ushered into law by the TradeMarks Act 2003. Changes introduced by that legislation specifically allow the registration of signs consisting of shapes, smells, colours or sound, provided they can distinguish the goods of one trader from another.

Trade Mark Lawyer AucklandFor now, the registration of “smell” marks face the practical problem of how to identify a sign that encapsulates the odour in question, and there are currently no smell trade marks registered in New Zealand. However, numerous product signs representing sounds, colours and 3-D shapes have obtained registration. The NZRFU’s registration of the colour black and Mr Whippy’s registration of musical notes comprising part of the score of “Greensleeves” are cases in point. Registrations for shape marks form the overwhelming majority of registrations of the new nontraditional marks. While most of those registrations are not of the product itself but rather the container by which the product is recognised, some are shape marks of the goods themselves. Witness the Hershey’s chocolate drop, the Maglite torch, the Dove soap cake and all manner of Beecham toothbrushes.

The registration of product shapes brings with it unique advantages for proprietors and equally unique disadvantages for competitors.

Prior to the emergence of product shapes as trade marks, manufacturers typically relied on copyright, registered designs and the law of passing-off to protect the “look” of their goods from competitors. Often there was a cross over with patent protection as well. However, these avenues had shortcomings. Copyright and registered design protection in manufactured goods typically lasts for only 16 years. With patented goods, protection expires after 20 years. Passing off has its own difficulties in requiring proof of reputation and some form of misrepresentation by manufacturers of an opposition product.

As a result the expiry of copyright, registered design and patent protection often looms large just as a highly successful product reaches its commercial zenith. Enter registered trade mark protection, which in effect provides a perpetual monopoly for product shapes by giving the proprietor the exclusive right to use the product in question for an unlimited period of time. The enormous commercial benefit of such a right has not escaped the world’s leading manufacturers.

Philips’ marathon litigation attempt to register the shape of its three-headed rotary electric shaver, spanning at least the last decade, is a good example.

In a significant decision the New Zealand Court of Appeal inFredco Trading Ltd v Miller (2006) 11 TCLR 751 the Court upheld the registration of the shape of the Klipon kiwi fruit vine tie. The trade mark was registered after the expiry of patent, registered design and copyright protection. A competitor challenged the registration of the product shape on the grounds that it could not function as a trade mark. The Court of Appeal dismissed that challenge on grounds including that the evidence supported identification by consumers of the vine tie by shape anda link to its origin.

The practice adopted by the Intellectual Property Office of New Zealand (IPONZ) is by and large to allow registration of product shapes, given evidence of extensive use and recognition by consumers of the product. In comparison with other jurisdictions, this practice appears to be a liberal one. The difficulty with this approach, is that it can equate product recognition with trade mark significance.

The Philips’ litigation has highlighted the problem. Should the central focus of the inquiry be whether consumers recognise a famous product, or whether the product itself can function as a brand? In other words, can the trade mark be the product itself or does it have to be something else?

The danger of equating product shape with a trade mark is that, typically, the product sought to be protected is sold and advertised under a well known brand. Assuming that any patents,registered designs or copyright that may have protected the product have expired, then it is not surprising that its appearance becomes well known.

The manufacturer then says that the appearance alone will serve as a trade mark even though the manufacturer always uses the overarching “word” brand to promote the product. If, on that basis, the manufacturer obtains trade mark registration, it is then in a position to stop other parties using their own famous brands from selling an identical or similar product, even though no one is deceived or misled and no other rights are infringed.The debate overseas on registering product shapes as trade marks has also put the focus on the anti-competitive implications of granting trade mark rights in products whose primary purpose is functional. In other words, should a product that has the best functional solution to a particular technical problem, say, the Philips’ shaver, which has also had the benefit of patent protection for many years, be entitled, once the patent has expired, to claim a perpetual right in those solutions by virtue of trade mark law? No, say the anti-competitive lobby. Once a product shape is accepted for registration by IPONZ, submissions are called for. If there is no opposition, it will be registered. In that case, the only available avenue to a competitor wishing to challenge the registration is an application to declare the registration invalid.

However, less-than-vigilant competitors may not be alert to the three-month period available to them to lodge their opposition. Therefore, timing can be everything, because during anopposition to registration, the onus of establishing that the trade mark should be registered rests on the manufacturer of the product. Once the trade mark passes through to registration, the onus shifts so that a competitor seeking to manufacture an identical or similar product bears the onus of establishing that the registration should not have been granted in the first place.

As a consequence, the lessons for those on either side of a bid to secure trade mark rights in product shapes should be obvious.

Alex McDonald, Trade Mark Lawyer Auckland