Introduction
It has long been the aim of Intellectual property law to develop legal rules that seeks to balance competing interest. The goal is to provide creatives with enough legal protection which will help promote incentives for innovative ideas. Rules and doctrines are also set in place to ‘minimize the effect on the commercial marketplace and minimize interference with the free flow of ideas generally’[1]. With the advancement of technology in the 21st century, the concept of trademark as we understood it 50 years ago can no longer serve as an adequate reflection of our modern economy. In order to gain a competitive advantage, ‘’trade dress’’ is increasingly becoming an effective weapon used by modern businesses to differentiate their branded product and or/services. Where a trademark is used as a source of origin of goods or services, a trade dress on the other hand is a type of trademark that refers to the image and overall appearance of a product. This may include features such as ‘size, shape, color, texture, graphics or even particular sales techniques’[2]
In light of the decision in the Apple case[3], it appears that the subject matter of trademark protection under EU law as expanded to also include service dress. Since 2015, the requirement of graphical representation has been removed[4]. Previously, the need for graphical representation was interpreted to be a significant hurdle for unconventional signs[5] such as tactile marks, scent and sound. In many cases like libertel[6] it was impossible to overcome. The removal eliminates the substantive barrier that those types of unconventional marks had in the past, which opens the door to all new forms of novel claim around subject matter.
In light of this expansion under trademark, does that mean then that the other regimes such as designs and passing off have become redundant or pointless? This essay will argue that although these changes do eliminate substantive barriers to registration that unconventional marks had in the past, it essentially opens a new form of novel claims around subject matter of what may be registered under trademark law. As such, there are still some hurdles that the negative criteria for registration poses under the absolute grounds of refusal. Such as distinctiveness and non- functionality. As a result, the protection provided by the design law in the EU and the tort of passing off in the UK are still very much relevant.
Analysis of Protection of trade dress under EU trademark law
The necessary conditions for signs to be registered are set out in Art 7 in which distinctiveness (inherent or acquired) and non-functionality are the most crucial of them. The CJEU has stressed that for a sign to be regarded as distinctive, it “identif[ies] the product in respect of which registration is applied for as originating from a particular undertaking, and thus distinguish[es] that product from products of other undertakings”[7]. It follows therefore, that non-distinctive signs are excluded from protection unless the applicant can provide evidence of acquired distinctiveness through use that has been made before filing the application. This is essential especially for all sensory marks which by nature cannot be distinctive[8] as was held by the CJEU in Libertel[9] that colors are rarely inherently distinctive[10] but through use, can acquire distinctiveness[11]. The requirement for distinctiveness is paramount in balancing the interest between future trademark owners and the competing traders. A justification for this is that the more the variety of registrable marks there are at the same time, the fewer the marks there will be in the ‘public domain’ for competitors to use[12]. This relates back to the main justification for trademark; that it provides information about the commercial source of origin[13]. As such, if it fails to be distinctive, it becomes generic and can no longer be relied upon to have the capability to separate and distinct between the goods and services of different entrepreneurs[14] .
Criticism of distinctiveness
The need for acquired distinctiveness will pose a significant hurdle for unconventional subject matter and shapes. As highlighted in the Voss[15], the CJEU asserted that the perception of the average consumer is not necessarily the same in relation to a three-dimensional mark consisting of the appearance of the product itself as it is in relation to a word or figurative mark consisting of a sign which is independent of the appearance of the product it designates.”
This highlights that there is a ‘normative presumption’, that the CJEU has created in case law, that average consumers are not in the habit of purchasing product or service based on their appearance or colour. Therefore, one could extend these rules also to smell, taste and touch. As such, the ‘‘normative presumption” the law has created, in saying that there is no consumer pre-deposition to treating these types of unconventional marks has source identifying brands, will stand in the way for these new forms of trademarks. This contradicts the common criticism of academics that only product shape marks find it hard to establish inherent distinctiveness[16].
As a result of this presumption, the CJEU uses the ‘depart significantly test ‘to decide if the shape of a product is inherently distinctive or not [17]. The CJEU in the Apple case did not cite the two-part test in full which would have been helpful to understand the normative role of the test. This gives the impression that the trade dress uniqueness on the market is what matters and by focusing only on the first part of the test, one can see the similarity with the ’individual character’ of design. This criterion and the empirical rule about consumer habits are difficult to satisfy.
Nevertheless, this does not mean having shape as source-indicator of a product does not matter to consumer’s, but it will be very difficult to establish due to this presumption[18]. The standard of acquiring distinctiveness is very high. Though the test is very simple, in that in analysing those claims we must pay attention to the way the mark has been used in the market and if it is possible to establish that the shape alone is the reference point for consumers as opposed to any other brand. In the nestle case of Kit Ka[19]t the claim was that because of extensive use in the market, the shape of Kit Kat has acquired source significant i.e. consumer has developed secondary meaning identifying the source. One thing highlighted by the court in this case was that the chocolate bar is packaged in a way that the bar is not actually visible to consumers. It was not until recently that nestle started printing the picture of the chocolate bar outside the product packaging.
The second factor is the name kit kat is now impressed along the bar which raises a very strong inference and presumption for the court that the actual reference point for the consumer was the word mark ‘’KIT KAT’’ rather than the shape itself[20]. Essentially, the court has developed a very content test. As such, we need to look exactly at what motivates the consumers to get a product in which the shape alone must do that job.
Arguably as this case highlights, a loophole to this is to develop other marketing techniques to promote the shape alone. The focus of the advert campaign should be less of the name kit kat or slogan and more on the shape which Nestle could have done. So, as well as the public interest aim, there are safe guards in place either at the stage of registration prior to use i.e. regarding claims of inherent distinctiveness or at the stage of registration after the market use regarding secondary meaning or acquired distinctiveness.
NON-FUNCTIONALITY
The 2015 changes also expanded the functionality doctrine which was previously under article 3 {1} {e} now article 4{1} {e}. This is a very expansive doctrine that prohibits the registration of certain subject matter or signs that are likely to clash with competition concerns or are likely to raise competition concerns. This doctrine was expanded to include not only just the shape of a product, but also ‘’signs which consist exclusively of the shape, or another characteristic, which results from the nature of the goods themselves; which is necessary to obtain a technical result; and which gives ‘’substantial value’’ to the goods are excluded from registration‘’[21].
“Another characteristic’’ of a product can include the colour of a product i.e. colours that alert consumers to danger (red). As colours can also perform functional purpose when attached to a product, under this functionality doctrine, colours might be analysed under the sharp radar of the functionality doctrine.
Criticisms
One would expect expanding it will be in accordance with the expansion of the subject matter, because now it is not just a shape, even if the sign in question is found not to be purely functional there still remains the question of whether it can actually do the job of a trademark by reference to consumer pre-disposition – which the law has already created this presumption that there is no consumer pre-disposition. The market use of these unconventional marks is likely to struggle. This is because the function of trademark is to protect indication of origin not to give you indefinite protection over 3D shapes as such. So, even though we have a very expansive notion of what may constitute a trademark, it doesn’t necessarily mean that they will be registered because they are other protective barriers. Indeed, in the Lego case[22], their application of the toy brick according to this provision was rejected as the court are reluctant to grant permanent monopoly by preventing public use of similar shapes. This relates back to the rationale in Philip case ‘’to prevent trademark from granting applicants a monopoly on technical solutions[23] or functional characteristics of a product”[24]. These protective barriers perform very important public policy functions, for example functionality promotes competition – the reason why those functional features cannot be registered will be because other traders want to use them legitimately and consumers will be looking for these things in a product of competitors. So, it is a very important public interest consideration in making sure that those functional characteristics of products remain in the public domain i.e. unprotected by trademark law.
Another hurdle is the exclusion of goods that has substantial value, in Bang v Olufsen[25] they couldn’t register their shape as it was held to be too valuable, the aesthetic characteristics gave it an appeal beyond the main function of trademark. A justification for this is that unlike the other IP right which purpose is to incentivise you to markets and give you a time limit monopoly before it passes into public domain, trademark is simply to act as an indication of origin. So, the use of trademark law to get control of a 3D shape will be an abuse of trademark law. Which is why it is very difficult to get protection under trademark for trade dress. This links back to this essay’s argument, that in theory it is possible to get trademark protection for trade dress but in practice there are all these exclusions which makes it difficult. It will be anti-competitive if a company could have permanent monopoly over a design permanently. If the design is valuable it should be kept free for all to use and if it is to be protected by IP right it should be time limited like that of a design right, that way it eventually passes to the public domain.
The law is doing well to ensure they are proper safeguards in place either through high distinctiveness standard or through the functionality doctrine.
Design
In cases where a trade dress cannot satisfy the barriers in trademark regulation, design may accommodate it. It refers to ‘’the appearance of the whole or part of a product[26] as such, protecting trade dress is essentially what designs are there for. That is why the idea of trademark potentially expanding and treading on design right is an issue. There are also no concerns over granting exclusive right under design as the protection ends after 25 years and passes on to the public domain.
The policy goal of granting a design right is to act as an incentive for the creation of new appealing products. The conditions for design are novelty and individual character. If the trade dress has not been made available to the public prior, it is easier to establish ‘‘novelty’’. Indeed, it is easy to register a trade dress under design as there is no need for it to have substantial value. As such, the subject matter of design protection is broader and wide which may include the non-conventional signs. The broadness of design protection to trade dress including service dress is welcomed, as there may be businesses where securing a visual appearance design may be key to securing market success. For example, the furniture industry that relies heavily on the appearance of the furniture and the electronic industry.
The informed user is probably the most controversial aspect of design law. Firstly, the notion of informed is ambiguous as it is unclear just how informed an informed user will or should be. In Pepsi co[27]the general court said the informed user ‘‘lies between the average user and the expert’’. They inferred pogs could be used by a five-year-old child or middle age man, which indicates that the ‘’informed user’’ varies.
Additionally, ‘’features of appearance which are solely dictated by their technical function”[28] are not eligible for design registration. The purpose of this is to prevent design law from being used to achieve monopolies over technical solutions. (Lindner) However, there is no definition by what is meant by this particular exclusion. The ‘multiplicity of form theory’[29] argued if a technical solution can be achieved by two alternative methods, neither solution is solely dictated by the function of the product. The issue with that is design or trademark cannot give you control over functionality as only patent can do that; hence the theory is rejected, and the approach is even if there are multiple designs that could achieve the same function[30]. If each of those designs has been dictated purely by its function, they are excluded.
Courts are also reluctant to the finding of registered designs[31]. The reason it seems to be so difficult to enforce design right is because of the standard of an informed user, the informed user is so attentive to details that even minor differences is enough to establish a different overall impression. Though, the fact that these cases have not ended with infringement does not mean it’s never enforced perhaps the case are settled out of court.
The informed user can be a double-edged sword; on the one hand it makes it easy to register your design by satisfying individual character but can also make it difficult to enforce your design because the informed user will easily see any details and conclude there is a different overall impression.
Overall, although design right seems very difficult to enforce, it is not redundant as it offers protection where there are barriers under trademark law such as distinctiveness and exclusions.
Passing off
Accumulation of rights provide that it is possible to register trade dress under trademark law, design law and the UK common law right of passing off[32]. Thus, passing off can also offer protection for trade dress. This was applied in Jiff lemon case[33] that provides the requirement for passing off in which “goodwill”, “misrepresentation”, and “damage” are necessary. Distinctiveness also is required, however if not inherent, one has to establish secondary meaning. The claimant must establish that the get-up has become associated exclusively with his business not the generic get up used in the business[34]. Passing law recognised that these features must belong to the public, they must be left unprotected as they are very common in the trade. If you allow one trader to monopolize and claim exclusive right over a trade, you are preventing all of the traders who have a legitimate right to use that particular right to do so. You are effectively depriving them of competition or effective means of competition and communication. These concerns are also internalized within passing off and trademark.
The relevance of passing off is that it is an opposition ground under the community trademark regulation. In the Last-Minute Case[35], they tried to register the name for their business but was rejected for being too descriptive of the characteristic of the claimant services. Nevertheless, given the goodwill they had in this country they were able to stop this on the basis of passing law. So, passing off remains a valid common law. It can be adapted to commercial reality and provides remedy when trademark law is incapable. i.e. in the Rihanna case[36] she would not have been able to trademark her personality as it has to be clear and precise, but she can get a passing off action[37] – this is an example of how passing off action is still relevant as they are absent of strict exclusions. Although in Jiff lemon the courts discuss that there are still limits on what can be protected, for example, they are not willing to give a protection over functionality, but you don‘t have strict exclusion that you will have with trademark.
There are some issues which passing off claims may face that makes it very difficult and expensive to establish, especially with the misrepresentation. There is a higher standard to prove, unlike that of trademark which ask if the average consumer will be confused. This has to do with if people are actually being deceived, which is very difficult to satisfy. It was satisfied in jiff lemon as arguably a lemon juice is not expensive, however with high end products it is unlikely that consumers will be deceived. Reliance is also a very stringent test and it seems after the jiff lemon case; the courts are reluctant to protect trade dress. In the Moroccan oil case[38], the claimant was unable to prove that there was goodwill attached to the get up of the product – the test used here was reliance as they were not able to prove the public will rely on the shape or the colour in order to identify their product. The evidence showed that the public were more likely to rely on the name itself to decide or make a purchasing decision, hence the claim failed. Passing off also has a limited purpose as it doesn’t protect the brand or name itself but the goodwill that the name has generated in connection with the particular product. Usually, if the defendant has taken steps to avoid misrepresentation, the passing off claim will fail.
In conclusion, this essay has shown that despite the expansion of the subject matter of trademark law in the EU, design law and passing off law have not become redundant as each law provides different regimes. Each law also has its strengths and limitations to the trade dress owner, the accumulation of right enables the owner to benefit from each registration. As such, the overlapping of these rights provides freedom of choice to the trade dress owners
Bibliography
- Aplin & Davis, Intellectual Property Law (4th ed, OUP 2018) chapter 6.
- Art.7(1)Dir/Art.8 CDR
- Bently, L., Sherman, B., Intellectual Property Law, pp. 952-953.
- C. Walsh, Are Personality Rights Finally on the UK Agenda? E.I.P.R. [2013] 35(5), 253-260
- Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2004]
- Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2004].
- Case C-421/13 Apple Inc v Deutsches Patent-und Markenamt [2014].
- Case C-48/09 P Lego Juris A/S v OHIM [2010] ECR I-8403.
- Case C–281/10 P PepsiCo Inc v Grupo Promer Mon Graphic SA [2011] ECR I–10178.
- Case C–299/99 Philips v Remington [2002] ECR I–5490, para 78.
- Case T-508/08 Bang & Olufsen v OHIM [2011]
- Cesar J Ramirez-Montes, ‘Protecting “Service” Dress in Europe’ (2015) <https://law.depaul.edu/about/centers-and-institutes/center-for-intellectual-property-law-and-information-technology/programs/ip-scholars-conference/Documents/ipsc_2015/abstracts-papers-presentation/RamirezMontesC_Paper.pdf> accessed 10|12|18
- Council Regulation (EC) 6/2002 on Community designs (codified version) [2002] OJ L3/1, art 3(a).
- D Fields and A Muller, ‘Going Against the Tradition: the Effect of Eliminating the Requirement of Representing a Trade Mark Graphically on Applications for Non-Traditional Trade Marks’ (2017) 4 EIPR 238
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- L Brancusi, ‘Designs determined by the product’s technical function: arguments for an autonomous test’ (2016) EIPR 23
- Last Minute Network v OHIM – Last Minute Tour (CFI, 2009) T-114/07
- Laurie, G., et al., Contemporary Intellectual Property: Law and Policy, p. 589.
- Laurie, G., et al., Contemporary Intellectual Property: Law and Policy, p. 589.
- Linde AG (C-53/01), Winward Industries Inc (C-54/01), and Rado Uhren AG (C-55/01) [2003] ECR I–3177.
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- Magmatic v PMS [2014] EWCA Civ 408,
- ‘’Multiplicity of forms ‘’ theory per Lindner Recycling Tech, confirmed by Nintendo v Compatinet (2015)
- Moroccan Oil Israel v Aldi, [2014]
- Sahin, ‘The Past, the Present and the Future of Colour and Smell Marks’(2016) 8 EIPR 504
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- Reckitt & Colman Ltd v Borden Inc [1990] 1 All E.R. 873
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- Robyn Rihanna Fenty and others v Arcadia Group Brands Ltd (t/a Topshop) and another [2015] EWCA Civ 3
- Sections 51 and 236 of the CDPA 1988
- Société des Produits Nestlé SA v Cadbury UK, [2017] EWCA Civ 358
- Société des Produits Nestlé SA v Mondelez UK (C-84/17 P, C-85/17 P and C-95/17 P)
- Tavener Rutledge v Specters, [1959]
- Two Pesos v Taco Cabana, 505 US 763, 765 (1992)
- Voss (n 109) [90]
- Voss (n 109) [91]
[1] J. Gordon Hylton, David L. Callies, Daniel R. Mandelker& Paula A. Franzese, Property Law And The Public Interest: Cases And Materials 52 (8th ed. 2017)
[2] Two Pesos v Taco Cabana, 505 US 763, 765 (1992)
[3]Case C-421/13 Apple Inc v Deutsches Patent-und Markenamt [2014].
[4] Recital 13 of Directive 2015/2436 and recital 9 of Regulation 2015/2424
[5] D Fields and A Muller, ‘Going Against the Tradition: the Effect of Eliminating the Requirement of Representing a Trade Mark Graphically on Applications for Non-Traditional Trade Marks’ (2017) 4 EIPR 238
[6] Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2004]
[7] Linde AG (C-53/01), Winward Industries Inc (C-54/01), and Rado Uhren AG (C-55/01) [2003] ECR I–3177.
[8] Laurie, G., et al., Contemporary Intellectual Property: Law and Policy, p. 589.
[9] Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2004].
[10] O Sahin, ‘The Past, the Present and the Future of Colour and Smell Marks’(2016) 8 EIPR 504
[11] Ibid, para 66
[12] Laurie, G., et al., Contemporary Intellectual Property: Law and Policy, p. 589.
[13] Aplin & Davis, Intellectual Property Law (4th ed, OUP 2018) chapter 6.
[14] Bently, L., Sherman, B., Intellectual Property Law, pp. 952-953.
[15] Voss (n 109) [90]
[16] Lotte Anemaet, ‘The Public Domain is Under Pressure – Why We Should Not Rely on Empirical Data When Assessing Trade Mark Distinctiveness’ (2016) 3 IIC 303, 312-113; Darren Meale and Daniel Kendziur, ‘Boring Booze Bottle Shape Trade Mark Rejected by the General Court: Even Though it Bore a Registered Word Mark’ (2014) 12 EIPR 807
[17] Cesar J Ramirez-Montes, ‘Protecting “Service” Dress in Europe’ (2015) <https://law.depaul.edu/about/centers-and-institutes/center-for-intellectual-property-law-and-information-technology/programs/ip-scholars-conference/Documents/ipsc_2015/abstracts-papers-presentation/RamirezMontesC_Paper.pdf> accessed 10|12|18
[18] Voss (n 109) [91]
[19] Société des Produits Nestlé SA v Cadbury UK, [2017] EWCA Civ 358
[20] Société des Produits Nestlé SA v Mondelez UK (C-84/17 P, C-85/17 P and C-95/17 P) ECLI:EU:C:2018:596; Société des Produits Nestlé SA v Cadbury UK (C-214/15) ECLI:EU:C:2015:604.
[21] Regulation (EU) 2015/2424 amending Council Regulation (EC) No 207/2009 on the Community trade mark and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market [2015] OJ L341/21, art 7(1)(e).
[22]Case C-48/09 P Lego Juris A/S v OHIM [2010] ECR I-8403.
[24] Case C–299/99 Philips v Remington [2002] ECR I–5490, para 78.
[25] Case T-508/08 Bang & Olufsen v OHIM [2011]
[26] Council Regulation (EC) 6/2002 on Community designs (codified version) [2002] OJ L3/1, art 3(a).
[27] Case C–281/10 P PepsiCo Inc v Grupo Promer Mon Graphic SA [2011] ECR I–10178.
[28] Art.7(1)Dir/Art.8 CDR
[29] ‘multiplicity of forms’ theory per Lindner Recycling Tech, confirmed by Nintendo v Compatinet (2015)
[30] L Brancusi, ‘Designs determined by the product’s technical function: arguments for an autonomous test’ (2016) EIPR 23
[31]Magmatic v PMS [2014] EWCA Civ 408,
[32] Sections 51 and 236 of the CDPA 1988
[33] Reckitt & Colman Ltd v Borden Inc [1990] 1 All E.R. 873
[34] Tavener Rutledge v Specters, [1959]
[35] Last Minute Network v OHIM – Last Minute Tour (CFI, 2009) T-114/07
[36] Robyn Rihanna Fenty and others v Arcadia Group Brands Ltd (t/a Topshop) and another [2015] EWCA Civ 3
[37] C. Walsh, Are Personality Rights Finally on the UK Agenda? E.I.P.R. [2013] 35(5), 253-260
[38] Moroccan Oil Israel v Aldi, [2014]