IP in industrial designs is typically protected as a registered design (for appearance, style or design) and sometimes as a patent (for a new, useful and non-obvious invention). Trade mark protection is routinely used to protect names and other valuable aspects of branding.

Although trade mark protection is not an obvious choice for protecting the unique shape or configuration of a product, it can be very relevant in the design process and in subsequent IP protection. This is because an industrial design may include brand qualities (distinct from technical qualities), and trade mark registration offers some advantages over other forms of IP protection. 

Trade mark registration is available for any aspect of a product that is capable of distinguishing the product from those of other traders – even the whole shape.

A shape (three-dimensional) registration claims protection for certain goods (and less commonly services). Although registration of shapes as trade marks is commonly touted as a brave new world, it is not that new.

In Australia, the trade marks legislation has expressly allowed for registration of shapes as trade marks since 1995. Previously, shape trade marks were not registrable in Australia because a trade mark was considered to be something separate and apart from the goods, a material sign to be affixed to the goods or their container.

Rolls-Royce’s reliance on US shape trade mark registrations provides an interesting historical example. A&A sold and manufactured customising kits designed for the Volkswagen Beetle, including an Elegant Beetle kit for radiator grill modification and hood modification.

In 1977 Rolls-Royce established that this use infringed its three-dimensional Spirit of Ecstasy (also known as the Flying Lady) and Classic Grill trade marks and was entitled to relief in the US.

Shape trade marks are a miniscule fraction of all marks filed and as such the issues are relatively novel, especially as savvy traders are pushing the boundaries.

However, the precise boundaries of shape trade marks will not become apparent until the rights are tested in conflict. It is also very unclear how a trade mark owner would fare in an infringement action against another trader’s use.

A relatively recent Federal Court case (in relation to fence droppers) does provide some clarification on use of a shape as a trade mark and ‘back-door’ attempts to extend patent rights through trade mark registration.

The Federal Court cancelled a registered shape trade mark on this basis in an infringement action based on a three-dimensional ‘S’ shape for fence droppers used to space the wire strands in stock fencing (Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd [2008] FCA 27).

When it comes to criteria for registration as a shape mark, two important factors must be taken into consideration: public policy and distinctiveness.

Public policy considerations pervade protection of shape marks and are paramount. In very broad terms, IP rights such as patent, design and copyright confer a temporary monopoly or exclusive right as an incentive for innovation, invention and sharing of knowledge.

Registered trade mark rights are conferred to protect a trader’s trade mark (a distinctive sign) and the rationale is to prevent confusion amongst products in the marketplace. As outlined (and in contrast with the other rights), the registered right can potentially be maintained forever, as long as the mark remains distinctive and the mark is used.

Some examples of shape mark registrations in Australia include Faber-Castell Connector pens, Global Knive’ 3-D indented dot pattern, Stabilo Boss highlighter pens and Kwik Lok bag closures.

Trade mark offices and courts endeavour to carefully balance public policy considerations and are loathe to grant traders a perpetual monopoly for something more properly in the design or patent realm.

Distinctiveness is the backbone of trade mark law and any shape mark will be carefully scrutinised to assess whether it is inherently distinctive (in general terms, that means a mark that is so fancy that other traders would not have legitimate need to use it in connection with their goods or services).

It is possible to obtain both a shape trade mark and a registered design. There are no grounds for rejecting an application for registration of a trade mark that is, or contains, a shape (that is, a three-dimensional object) merely on the grounds that the trade mark applicant has a design registration, or a pending application for registration of a design, for the same three-dimensional object.

You can have both a shape trade mark and a patent registration, too. However, this is less clear-cut than with design registrations. The trade mark regime will not help the owners of expired or expiring patents extend their rights where the trade mark in question has become the commonly known way of describing that article. Section 25 of the Trade Marks Act 1995 (Commonwealth) explains this in greater detail.

Notwithstanding the possible hurdles in obtaining trade mark protection for an industrial design as a shape mark, the long life (potentially perpetual) of registered trade mark rights mean that the brand qualities of an industrial design should be a factor in the imaginative and effective use of available IP protection. 

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