In today’s competitive market, a product’s shape or packaging can do more than attract attention — it can serve as a key element of brand identity. While less common than word or figurative marks, three-dimensional trademarks are increasingly important in brand protection.
Published in the Romanian Journal of Intellectual Property Law (Year IV, No. 1, 2007), the article “Distinctiveness of Three-Dimensional Trademarks Consisting in the Shape of Products or Packaging”, by Gabriel Turcu and Dragoș Bogdan, analyzes the legal framework and jurisprudence governing the registrability of such marks. It highlights the fine line between design and legal identity, and how functionality can limit trademark protection.
THE DISTINCTIVENESS OF THREE-DIMENSIONAL TRADEMARKS CONSISTING IN THE SHAPE OF PRODUCTS OR PACKAGING
Gabriel N. Turcu, Dragoș Bogdan
The shape of a product or its packaging may constitute a valid trademark only insofar as it is capable of distinguishing the goods or services of one enterprise from those of another. In this article, we aim to analyze how this condition of distinctiveness can be fulfilled when the sign whose registration is sought consists exclusively of the shape of the product or its packaging.
In practice, it is quite common for applicants to request the registration of a sign that is graphically represented by the image of a product (in perspective or in various positions), considering that this shape has acquired, through use, a distinctive character. Most often, these are signs consisting of the external appearance of packaging, bottles, flacons, or boxes — generally shapes with a certain degree of originality.
The complexity of the issue lies, however, in the fact that, by their nature, these shapes — although more or less original — do not automatically fulfill the function of indicating the commercial origin of the product.
The Court of Justice of the European Communities (CJEC), in several rulings (Linde, Winther, Remington), clarified the applicable rules for examining the registrability of signs consisting of the shape of a product. According to the Court, such signs are not excluded per se from trademark protection, but they must fulfill the general conditions applicable to any trademark, in particular the condition of distinctiveness.
The distinctiveness of a three-dimensional sign, especially when it is identical to the shape of the product, is not assessed differently from that of other types of trademarks. However, in practice, proving distinctiveness is more difficult in these cases, as the average consumer is not accustomed to perceiving the product’s shape as an indication of its commercial origin — unlike word or figurative trademarks, which more clearly fulfill this function.
As a result, the distinctiveness of such a shape must be demonstrated through concrete evidence, most often by proving that the sign has acquired distinctiveness through use (secondary meaning).
In Romanian practice, OSIM (Romanian State Office for Inventions and Trademarks) has generally adopted a restrictive approach toward registering product shapes as trademarks. Frequently, these applications are rejected on the grounds that the shape is banal, generic, or commonly used in the relevant market.
At the Community level, OHIM (Office for Harmonization in the Internal Market, now EUIPO) has developed consistent case law in this regard, based on CJEC jurisprudence. According to OHIM’s practice, the following general principles emerge:
•A simple or common shape cannot, by itself, be distinctive;
•The presence of decorative or original elements may enhance distinctiveness, but must not be dictated by functional or technical needs;
•The overall appearance of the product must be sufficiently different from standard market offerings to create a distinct impression on the consumer;
•In most cases, distinctiveness must be proven through evidence of acquired distinctiveness.
In conclusion, the registration of a three-dimensional trademark consisting of the shape of a product or its packaging is possible only under certain conditions. The most important is that the sign must be capable of identifying the commercial origin of the product and must not consist exclusively of a shape resulting from the product’s nature, a shape necessary to obtain a technical result, or a shape that gives substantial value to the product.
Moreover, in the absence of inherent distinctiveness, the applicant must prove that the shape has acquired distinctiveness through long-term and intensive use, market recognition, and association with the applicant’s goods. This often requires consumer surveys, advertising investments, and other solid forms of evidence.
Therefore, while product design and packaging can play an important role in building brand identity, they must also be approached strategically from a legal standpoint, especially when seeking trademark protection.