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Peculiarities of registration of shape trademarks
Keywords: trademark, trademark registration, shape trademark, registration of configuration of goods, registration of package of goods, combined trademark, intellectual property, means of individualization
A trademark, in accordance with Article 1477 of the Civil Code of the Russian Federation is a designation intended to individualize goods of legal entities or individual entrepreneurs [ "The Civil Code of the Russian Federation (Part Four)" No. 230-FL of 18 December 2006 (as amended on 13 July 2015)].
There are several categories of trademarks, some of which are listed in Article 1482 of the Civil Code: "Verbal, visual, shape and other designations or combinations thereof may be registered as trademarks." The issue of registration of shape trademarks is of considerable interest, and this article is devoted to this very issue.
A shape trademark is, in fact, a registered shape or package of goods, which is provided with legal protection in the Russian Federation territory. However, not every shape or package may be registered as a trademark. If a shape or package is dictated exclusively or mainly by functionality of goods, is traditional and/or has no alternatives for homogeneous goods, then such a shape may not be recognized as protectable because it does not have distinctive ability (does not serve for individualization of goods of a particular manufacturer or seller), and no legal protection may be given to it as a trademark.
Thus, in accordance with Art. 1483 of the Civil Code of RF, the following is set forth among grounds for rejection of the state registration of a trademark: "... No state registration is allowed in respect of the designations as trademarks which have no distinctive ability or which consist of the elements only: 1) that are commonplace to designate goods of a certain kind; ... 4) that represent the shape of goods which is determined exclusively or primarily by a property or purpose of the goods." However, this article also states that these provisions do not apply if the designations "have acquired distinctive ability as a result of their use", or if the elements that are not protectable form a combination having distinctive ability.
Consequently, the main criterion the decision on registration is based on (or the decision on rejection of registration is based on) for a shape designation is presence of distinctive ability in it. This criterion is based on the following principles: 1) the shape of goods shall differ significantly from the traditional, common or widespread shape of similar goods used by many manufacturers of similar products; 2) the shapes dictated by the purpose or functional features may possess distinctive ability in those cases only where they have acquired distinctive ability, are easily recognized by the consumer and the consumer associates them stably with the manufacturer; 3) the shape of goods shall not be false in relation to the requested list of goods.
It is necessary that individual distinctive features of a shape or package are perceived in the consumer's mind as clearly indicative of a specific manufacturer. This occurs if the shape or package of goods is used by one manufacturer only for a long time. The shape of goods, even potentially possessing distinctive ability, shall be perceived as a trademark.
As an example, JSC "Khlebprom" (city of Chelyabinsk) applied a shape designation for registration, which represents the appearance of the cake "Muraveinik". Rospatent took a decision to refuse in the state registration of the trademark for all the requested goods of the 30th class of MKTU (the International Classification of Goods and Services). The basis for the decision was the conclusion of the examination, according to which the requested designation does not meet the requirements of clause 1 of Article 1483 of the Civil Code of RF.
JSC "Khlebprom" (the applicant) filed an objection against the decision of Rospatent, basing on the following arguments: "... the applicant has set up industrial production of the cake "MURAVINIK" for the first time in Russia; the applicant has been producing products having the shape of the requested designation since 2005; the requested designation has acquired distinctive ability as a result of its long-term use, and the consumer associates it with JSC "Khlebprom" only... "
The collegium of the chamber for patent disputes did not consider the applicant's arguments as supporting the acquisition of distinctive ability by such a shape designation: according to "... dictionary and reference materials ... cakes are usually large (sometimes very large - up to a meter in diameter) confectionery in the shape of a low cylinder or having elliptical, rectangular, triangular and even pyramidal and conical shape. Thus, the shape designation in dispute is not original, since such form and contour are conventional for cakes and pastries." In addition, the Collegium noted that such cakes of the similar shape are produced by different manufacturers, and it is not possible to establish that the cake itself, without reference to the other individualizing elements placed on the goods package, acquired distinctive ability and is associated with the applicant only.
Taking into account all the arguments, the collegium of the chamber for patent disputes came to a conclusion to reject the objections of JSC "Khlebprom", and uphold the decision of Rospatent [Conclusion of the Chamber for patent disputes of 19 June 2014 (Annex to the decision of Rospatent of 29 August 2014 on application No.2012727319) <On the rejection of the state registration of the trademark>].
If goods shape/package is recognized as not distinctive after all, the combined designations (which, in addition to goods shape, have such items as words or phrases, figurative elements and combinations thereof, etc.) still can be granted legal protection (if they have distinctive ability) with the exclusion of the requested shape from independent legal protection, recognition of it as an unprotected element.
It should be reminded that although Article 1483 of the Civil Code establishes that the state registration of the shape of goods which is determined exclusively or primarily by property or purpose of the goods is not allowed, but the shape of the goods as an element of the designation can be included in the trademark as an unprotected element.
Another example: the company Ludwig Schokolade GmbH & Co. KG, Allemagne filed an objection to the decision of Rospatent on refusal to grant legal protection in the Russian Federation territory to international registration mark No. 1109244. International registration mark No. 1109244 represents "... a three-dimensional image of chocolate slices in the shape of a truncated pyramid, with the figurative element in the form of the stylized image of a multi-beam star engraved on the upper edge, wherein the lateral edges of the pyramid are of rounded shape". Rospatent took a decision to refuse to provide legal protection to the international registration mark in the Russian Federation territory in respect of all goods specified in the list of registration because of its non-compliance with subclause 4 clause 1 Article 1483 of the Code.
Rospatent's decision was based on the results of the examination, which recognized that the mark is deprived of distinctive ability, since it "is not original, and repeats the traditional form of the product produced by different manufacturers." Rospatent also found that the applicant had not submitted any documents confirming the acquired distinctive ability of international registration mark No. 1109244 and knownness to Russian consumer.
In the objection filed with the Chamber for patent disputes, the company Ludwig Schokolade GmbH & Co. KG, Allemagne expressed its disagreement with the decision and gave the following arguments: "... the requested designation includes not only the shape of the goods, but also the figurative element in the form of the stylized multi-beam star, which is primarily perceived by the consumer in the perception of the designation since the figurative element is placed on the upper edge of the chocolate slice; the said figurative element is original and fanciful in relation to the requested goods and is granted legal protection in Russia (international registration No.1004157) and in the European Union countries (No. 1707306) ...; the chocolate slices in the requested shape have been used by the applicant since 1962, the used shape of the slices has not been changed significantly for more than 50 years of its use, and the figurative element engraved on the upper edge has not changed at all; the requested designation has been used in Russia since 1995, as evidenced by samples of labels and advertising leaflets ..., the applicant is one of the largest producers of confectionery products in Europe, has a network of plants in Germany and other European countries and is part of the biggest European concern "Kruger" engaged in food production; the applicant presented a certificate from the authorized person of the company with confirmation of the goods sales volume (batch chocolate) in Russia; the requested designation as a result of the use has acquired additional distinctive ability among Russian consumers, since the external embodiment of the chocolate slices and the figurative element on them have not been changed for many years."
The Collegium considered the arguments of the objections persuasive and found that "the shape of chocolate slices in the form of truncated pyramids with rounded edges and the images of the multi-beam star pressed on their upper edges are not traditional and are not explained solely by the functional purpose of the goods of the MKTU (the International Classification of Goods and Services) declared classes. The requested shape trademark has a number of features that distinguish it from the shapes of the same goods used by other manufacturers, and able to distinguish the applicant's goods from the homogeneous goods of other manufacturers..."
Thus, the Collegium satisfied the applicant’s objection, cancelled the decision of Rospatent and provided legal protection to international registration mark No. 1109244 in the territory of the Russian Federation [Conclusion of the Chamber for patent disputes of 3 April 2015 Annex to the decision of Rospatent of 15 June 2015 on application No. 0001109244 <About cancellation of Rospatent’s decision and granting of legal protection to the mark in the territory of the Russian Federation>].
It should be noted that the problems associated with the registration of the shape trademarks appear and are solved at the international level. Thus, the European Union Court considered the case concerning the legal protection of the shape trademark, which has the shape of Rubik's cube. The application for registration of the designation representing the image of Rubik's Cube, in respect of three-dimensional puzzles was submitted by the company Seven towns, and the trademark was registered in 1999. Later, the company Simba Toys GmbH & Co filed for the trademark invalidation. It was rejected. The applicant (Simba Toys) appealed against this refusal on the grounds that the designation had no distinctive ability, since three-dimensional puzzles usually take the form of a cube, which is explained by their functional purpose. In addition, the applicant insisted on the fact that this toy includes a rotation element - the "technical solution", which can only be protected by a patent, rather than a trademark.
The Court of the European Union rejected the claim, specifying, inter alia, that the division of each side of the cube into nine equal square elements does not perform a technical function and is primarily a decorative element and specifies the source of the goods. Besides, comparing the trademark with images on other three-dimensional puzzles on the market, the court came to a conclusion that they have significant differences. The court concluded based on this that the disputed trademark had a specific figurative embodiment allowing consumers to clearly differentiate the manufacturer.
Consequently, the US Court recognized it legitimate to register the shape of the toy "Rubik's Cube" as a trademark. [General Court of the European Union, PRESS RELEASE No 158/14, Luxembourg, 25 November 2014. Judgment in Case T-450/09, Simba Toys GmbH & Co. KG v OHIM]
Given the above, it may be noted that Russian legislation and international law allow for the possibility of granting legal protection to shape designations which acquired distinctive ability as a result of their widespread use in the market, as a result of which these designations make it possible to allocate the goods of a particular manufacturer from the bulk of homogeneous ones and associate them with a specific manufacturer. The applicant, in support of presence of distinctive ability, has the right to submit any documents showing the ability of the designation to raise associations in consumers’ minds which are related with a particular manufacturer of the marked goods, for example: documents confirming the volumes of production and sales of the goods that have the shape applied for registration, duration of the use of such a shape, advertising brochures, media publications, results of opinion polls confirming the recognition of the goods shape, etc. Finally, it appears possible to include not only the shape of the goods in the shape designation, but also other elements - verbal, visual ones that are original and fanciful in relation to the requested goods.