A trade mark must function as an indicator of origin of goods and services. That means that it must be distinctive or have acquired distinctiveness through use. This requirement for distinctiveness is generally not an issue with logos or brand names which can be inherently distinctive. However, it is challenging to show that the public associate a 3D shape with goods and services in the absence of a logo or brand name.

This even applies to very well-known brands. A good example of this is the long running dispute between Nestle and Cadbury in connection with the registration of the 3D KitKat shape.

Nestle sought trade mark protection for the 4 fingered shape without the word "KitKat" on it. Effectively, this would have given Nestle a monopoly over four-fingered chocolate bars. Nestle wasunsuccessful. It was the words on the chocolate bar and the packaging, not the shape, that indicated the origin of the goods.

Defence of the Land Rover Defender

The latest company to fall foul of the challenge of registering a 3D trade mark is Jaguar Land Rover. The High Court recently decided that four applications for 3D representations of the Land Rover Defender for goods including cars and toys were not eligible for registration.

Jaguar Land Rover relied on a public survey to show that the public recognised the shapes as Land Rovers. A surprising move as courts are generally a little reluctant to give survey evidence much weight.

However, the High Court agreed with the UK IPO that the survey showed that 20-40% of the public recognised the shapes as Land Rovers. That was not enough to say that the 3D signs had acquired distinctiveness and so the registration was refused.

Difficult terrain

It is challenging to prove that shapes are perceived by consumers as indicating the origin of the products. Generally, we as consumers don’t rely on shapes alone to identify who is selling the goods and instead rely on the brand name or logo on the goods.

It is telling that the four-finger KitKat shape could not be registered after 75 years of use. Perhaps this was always going to be terrain that Land Rover could not cross.

The reality is that most products are typically combined with word marks or logos which the average consumer will more readily associate with the goods. Brand owners will have to continue to rely on brand names, logos or packaging to protect their brands, or rely on passing off which can look at the overall get up of the product.

Whilst protection for 3D shapes is not impossible, it is difficult for all but the most unique shapes which depart "significantly from the norm" to be registered.