Amongst the many advertising campaigns we’re exposed to each day, you would be forgiven for failing to notice Coca-Cola’s latest, which marks the centenary of the firms famous bottle by showing celebrities of yesteryear enjoying a bottle of Coca-Cola.
What makes this anniversary significant from a legal perspective is that the Coca-Cola bottle is possibly the most famous example of a relatively rare type of intellectual property: a trademark consisting of a three-dimensional shape (a “shape mark”).
Initially born out of a desire to differentiate their product from copy-cat brands, Coca-Cola challenged glass makers to design a bottle which was “so distinct that you would recognise it by feel in the dark or lying broken on the ground”. The challenge was met by a design based on a cocoa bean and a bottle-shaped star was born. After settling on the design, there was a concerted advertising campaign which focused a lot of attention on the shape of the bottle. As a result, Coca-Cola was eventually able to prove that the shape was distinctive enough for customers to associate the bottle with the product made by Coca-Cola.
Today, the acquisition of distinctiveness through use is a difficult area generally, but particularly in relation to shape marks. In order to be registrable, a shape mark must not consist exclusively of:
- The shape which results from the goods themselves
- The shape of goods which is necessary to achieve a technical result
- The shape which gives substantial value to the goods
Registration may be allowed, however, if, before the date of the application, the shape has acquired a distinctive character as a result of the use made of it. This is how Coca-Cola eventually managed to trademark its ubiquitous bottle.
But the process is not always straightforward and such decisions can be difficult to predict. Although Coca-Cola was successful in achieving its registration many years ago, recent attempts to register the shape of Viennetta ice cream, Bounty chocolate bars and Kit Kat chocolate bars have all failed. The principal reasoning has been that as the shape of these objects is not seen until they are unwrapped, they cannot be badges of origin in the same way as shapes or words which can be seen when the product is being purchased.
Businesses wishing to trademark a shape should therefore bear in mind some general guidance given by the EU General Court (EGC) in two recent cases in which community trade marks for patterns for leather and other goods held by Louis Vuitton were invalidated.
The EGC said that the body deciding on the application for registration must assess the trademarks distinctiveness by looking at the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify the product as originating from a particular undertaking, statements from chambers of commerce and industry or other trade and professional associations as well as opinion polls .
The issue which the courts are keen to avoid is providing monopolies on useful shapes for indefinite periods, which is essentially what a trademark provides. The argument is that rendering certain shapes off limits to others could be a barrier to progress and innovation. A slight variation on this theme is the depletion argument, which states that as there is only a finite number of useful shapes, providing indefinite monopolies over any of them further reduces the number available. A similar argument is made in relation to the registration of colours as trademarks.
Read more on trademarks:
- A basic guide to trademark law
- From Huawei to Harley Davidson: Six of the strangest trademark attempts made
- SMEs need to be robust on intellectual property
The thrust of the law in this area has been to encourage the use of design rights instead of trademarks. This avoids giving monopolies over shapes as design rights provide relatively short periods of protection. At UK level, registered designs are renewable every five years for a maximum of 25 years and unregistered designs last for ten years from the object bearing the design first being made available for sale or hire or 15 years from its conception.
The possible compromise for those who would prefer a trademark is to use design rights to protect the mark whilst building up a store of goodwill and reputation in the meantime. An application for a trademark can then be made when it is thought that the mark has achieved sufficient recognition amongst the general public.
It is perhaps arguable that Coca-Cola succeeded in their registration at a time when the courts were less alive to these issues and did not have such well-developed alternatives available to them. Even so, the Coca-Cola bottle shows no signs of losing its appeal. Businesses of all sizes looking to register a shape mark could learn a lot from this example by placing emphasis on the strength of their brand and extending the reach of their advertising.