3D trademarks and reverse engineering

Three-dimensional trademarks can be filed for products with a distinctive shape or design that is easily recognized by consumers, such as perfume bottles or headphones. The Coca Cola glass bottle is the most famous example. 3D trademarks are, however, restricted to shape and design and cannot cover the technical function of the object. The criteria for registering one are very specific and therefore difficult to obtain, but they do provide a high level of protection. This prevents one company’s monopoly over a product, thereby ensuring competition in the marketplace and continued technological progress.

According the IPKat, although 3d trademark registrations do not cover the technical functions of a product, certain signs conveying a higher “degree of difficulty” require judges to reverse-engineer them. That means that they must see if the product’s practical function can be inferred from the trademark’s graphical representation and from the company’s commercial behaviour. If so, the 3-d trademark cannot be granted since its legal protection would ensure that company’s monopoly over all such products.

Reverse engineering by judges has already occurred in two notable cases.

The first case involves Yoshida knives. In 1999, the Japanese metal company registered two trademarks for two-dimensional signs connected to knife products. Three competitor companies demanded it be invalidated because the marks depicted a three-dimensional product which performed a specific technical function. The dots in fact represent concave indentations designed to keep the knife handle from slipping.  After several court cases and appeals, the EU General Court ruled that the essential characteristics of the trademark (a trapeze shape and collection of black dots) perform a technical function and therefore, the design could not be a protected trademark. The ruling was final in spite of Yoshida’s claims that the mark was just a two-dimensional geometrical design of black dots.

In this case, the court transformed a two-dimensional sign into a technical object, thereby setting the precedent for reverse-engineering marks. It was able to do so partly by taking into account the company’s commercial behaviour: Yoshida owned several patents for kitchen equipment, including knives.

The second case concerns Lego’s three dimensional mini-figures. An article from City University reports that Best-Lock, a company wanting to sell a similar product, challenged Lego’s 3d trademark. The EU court, in order to render a judgment, engaged in reverse-engineering. It inferred from the graphical representation of the mini-figures the representation of distinctive (human) traits as a purely aesthetic function. They were not able to infer from the shape and design of the Lego figures that they were made to connect to other building blocks. Therefore they were deemed to not serve a technical function and the trademark was allowed.

Image source: https://www.lego.com/en-us/minifigures/products

Recently, in the case of Seven Towns Ltd.’s Rubik’s cube, a first challenge in 2014 by Simba-Toys was overruled by the European General Court which determined that the presence of an internal rotating mechanism could not be inferred from the graphic representation of bold black lines or a grid-like structure on the surface of the cube. This decision, however, was turned around by the CJEU just last week. It claimed that "the essential characteristics of a shape must be assessed in the light of the technical function of the actual goods concerned", much like in the case of Yoshida knives. Seven Towns have therefore lost their trademark and are not happy about it. Their lawyer, Nick Kounoupias, was quoted in saying he fears for the future of 3-d trademarks: “this is a massive assault on the 3D trademark regime […] it is going to lead to the decimation of registered trademark protection for 3D shape marks for many businesses across the EU – and that, in turn, will have a devastating impact on people's jobs, on non-payment of VAT and non-payment of income tax in response to mass-pirated products coming from places like China.”

Image source: IPKat

In cases involving such complex designs, however, other options for legal protection exist, like registering it as an industrial design. You should always do your research before launching your brand to make sure that you protect your company’s reputation, brand value and profits in today’s global marketplace.

For advice and more information on searching, acquiring, registering and enforcing Trademarks please visit our website, http://www.lipex.com.
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