Get in shape!

Perhaps the notion of ‘getting in shape’ will be a New Year’s resolution for some, but intriguingly, it can also be a type of trade mark…

…If I were to mention two very popular household names – Toblerone and Ferrero Rocher – would you know that they have something in common? Well, other than being moreishly tasty chocolates, they are both registered SHAPE marks.

It is not just word or logo marks that can act as a trade mark for your business, in fact you can apply to register many types of mark to protect all aspects of your brand; even colours, sounds and shapes.

In order to successfully gain registration for your shape mark, your application will need to convince the Trade Marks Registry that a consumer is capable of viewing the shape as being significantly different from the ‘norm’ of shapes associated with that product or industry. In this way, it must be distinctive, and it must act as an indicator of origin to the consumer; the consumer must link the product to the trade mark, without doubt, every time they see it.

A lot of emphasis is placed on consumer recognition and perception at application and enforcement stage, so the more distinctive the shape of the mark which you might be thinking of registering, the better.

With shape applications come further stipulations: they must not result from the nature of the goods themselves (e.g. a LEGO brick is unable to gain registration as a trade mark), it must not be the shape of goods necessary to obtain a technical result (e.g. particular shaving devices), nor can it give substantial value to the goods (e.g. a speaker- the design of which can increase the appeal for a consumer and unintentionally grant a monopoly to the manufacturer).

Whilst shapes can therefore be less straightforward to register than a word or a logo mark, at Dolleymores, we take the time to review your mark and advise you of the likelihood of it gaining registration before proceeding with an application. There are also further ways to overcome any potential obstacles.

The important lesson with a shape mark (and indeed, any mark), is not to become complacent.

If granted registration for your shape mark, you will have exclusive rights to use the mark and to challenge competitors with similar or identical shaped goods that come on to the market.  If left unchallenged, the market may become saturated with that particular shape and the distinctiveness of your mark can be driven down over time which may result in cancellation of your trade mark at a later stage. Therefore using your mark, and defending it where appropriate is always advisable.

If you are interested in protecting the shape of your mark, or discussing other registration options available to you, please contact us to ensure that you get the advice required to achieve the strongest protection for your brand going forward.

For more information, please contact:

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Stuart Nield

Trade Mark Attorney
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Peter Marchand

Trainee Patent Attorney
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Joanne Nottage

Trade Mark Assistant
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