The dilemma most business owners face when trademarking shapes

It’s difficult to go about trademarking shapes, a concept recently highlighted by the Court of Appeal shooting down the London Taxi Company’s attempt to gain exclusive rights to its tweaked version of a black cab.

The shape wasn’t distinctive enough – an issue pointed out by the competition as well. Arguing against the LTC was Frazer-Nash Research, stating: “Passengers and Transport for London alike have certain perceptions as to how a licensed London cab ‘should look’.

“There is, effectively, a barrier to entry in the market for licensed cabs which are not recognisable as such – i.e. if a vehicle does not look like a licensed cab, passengers are less likely to hail it. The cab leans on the entire history of the sector and the British heritage of automotive designs.”

It serves as an example of how impossible a task trademarking shapes really is if your logo and packaging are the draw for your customer base. Just ask KitKat.

Several attempts at trademarking its “four fingers” have ended in misery, with judges claiming that it was only recognisable as the brand’s product due to the logo inscribed on the chocolate.

Shapes that aren’t normal are easier to put a stamp on – it’s why even water company Voss failed to retain the rights for a “perfect cylinder” bottle shape. Lego also couldn’t trademark its figures, where it previously succeeded with its bricks.

The court had found that the two rows part of the brick performed a technical function. The figures, on the other hand, held no real technical aspect – they were merely intended to convey humans, an aspect many toys made use of.

“The black cab case is a good example of the difficulties faced by applicants for trademarking shapes,” said Peter Nunn, legal director and head of the automotive group at Mishcon de Reya. “The types of features LTC relied upon (such as the round headlamps, a deep/high bonnet etc.) did not depart sufficiently from the basic design features of a car – they were merely a variant on them.

“That might not have been the end of the story if LTC had been able to show that the shape had acquired distinctiveness. However, following its decision earlier this year in relation to the shape of the KitKat bar, the Court of Appeal decided LTC had not done enough to educate consumers that there is only one manufacturer of taxis of that shape.

“The decision does give some hope that unique design might be sufficient for ‘inherent’ distinctiveness.”

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