Prof. Ilanah Fhima publishes Policy Brief on registering 3D shape trade marks

5 January 2024

Professor Ilanah Fhima has published a new policy brief which draws on an empirical analysis of five years of EU trade mark applications to explain how the EUIPO and UK Trade Mark Registry could adopt a more competition-focussed approach to registering 3D shape trade marks.

Policy Brief: Towards a competition-focused approach to registering 3D shape trademarks

Context

Today鈥檚 consumers make their product choices not only using brand names and logos, but also using features of the product鈥檚 appearance, including colour, texture, smell and shape. EU and UK trade mark law permits businesses to register 3D shapes, including the shape of products and packaging, as trade marks. Once registered, trade mark owners can stop third-party traders from using a similar shape which might confuse consumers or take advantage of the owner鈥檚 investment in that mark. This benefits the trade mark owner, and also consumers, who might otherwise mistakenly purchase a similar-looking product, assuming it to be the trade mark owner鈥檚. However, this protection can be anticompetitive because a product鈥檚 shape may also be fulfilling other functions, including embodying how the product works.

Analysis and recommendations

By considering which trade marks are being refused, which are being registered and why, Professor Fhima鈥檚 work reveals how the current legal regime for 3D shape marks is working, and opportunities for optimisation. The analysis holds important lessons not only for the EU, but also for the UK given that domestic trade mark law closely follows that of Europe.

In particular, it makes the case that judges, examiners and policymakers should:

Pay particular attention to the competitively hazardous registration of trade marks for the shape of products in black and white with no additional identifying material
Recognise that shapes can be functional and/or non-distinctive for services
Be alert to strategic registrations which may afford protection indirectly to goods for which the mark would otherwise be refused registration
Give a greater role to functionality
Be cautious with scope of protection for shape marks so as not to grant exclusive rights in non-distinctive shape elements that other traders may need to use

I am delighted to share recommendations based on a peer-reviewed empirical analysis of all 3D shape marks filed at the European Intellectual Property Office between 2017-2022. There are lessons to be learnt from how the system is currently functioning, and adopting a more competitive-focussed approach to registering 3D trade marks by implementing the recommendations identified has the potential to benefit both trade mark owners and consumers in the EU and the UK.鈥�

Professor Ilanah Fhima, Professor of Intellectual Property Law, 果冻影院 Faculty of Laws

This policy brief was developed through a听dedicated programme听within the Faculty of Laws which supports the translation of academic research for a policy audience, in partnership with the听果冻影院 European Institute.

For more information on this programme, contact听Lucy Shackleton,听Head of Policy and Partnerships,听果冻影院 European Institute or听, Associate Professor听in Health Law and Normative Jurisprudence and Research Impact and Engagement Lead at 果冻影院 Faculty of Laws.听
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