The dark side of the moon…maintaining your investment in 3D trade marks
3D trade marks can be difficult to obtain. The recent successful cancellation of the 3D trade mark for the ‘Moon Boot’ and unsuccessful cancellation of Ritter Sport’s square chocolate bar are reminders of how protection does not stop at registration. Brands need to monitor and protect their 3D shapes on an ongoing basis or they risk the shape becoming generic and the mark being cancelled.
Kemp Little’s innovative end-to-end 3D trade mark and designs solution takes you from registration through expert AI-driven online monitoring and ongoing enforcement.
‘Moon Boot’ Cancellation Action
In May 2020, the EUIPO cancelled Tecnica Group S.p.A.’s 3D shape of the popular ‘Moon Boot’ (filed in Classes 18, 20 and 25 in August 2011 and registered in March 2012) on the basis that it no longer functions as a trade mark.
For many readers, this may come as a surprise given the longstanding presence of the ‘Moon Boot’ and its (apparently not) distinctive look. So why are Tecnica now in this position?
After an extensive review of substantial evidence, the EUIPO held that the shape of the ‘Moon Boot’ was found not to depart from the norms and customs of the trade.
In this regard, in order to register (and maintain registration of]) a 3D mark, it must be distinctive and distinguishable from the standard shapes on the market. A trade mark must distinguish the products of one undertaking from that of another.
However, in this case, the EUIPO found that “the relevant public would not individualise the contested sign – it is merely a variant that does not depart sufficiently from the norms and customers of the trade”. Essentially, as the general ‘L’ shape of the lightweight boot is found in virtually all snow boots, Tecnica should not maintain its legal monopoly in the 3D mark.
Although, Tecnica provided a large amount of evidence of use, arguing acquired distinctiveness, Zeitneu (the Cancellation Applicant) also provided a large amount of evidence of ‘L’ shaped snow boots on the market.
Ritter Sport’s Square Chocolate Bar Cancellation Action
The German chocolate manufacturer Ritter Sport has had a German trade mark registration for its famous square chocolate bar shape since 2001.
Its competitor, another famous chocolate brand Milka, has sought to cancel this trade mark registration for a number of years on the basis that the square shape is a basic shape and no one proprietor should have a monopoly on it.
Milka were successful in 2016 on the basis that the square shape gave the product an extra advantage as it was easier to fit in a pocket and therefore added significant value to the product (which would render the mark invalid).
However, in 2017, the Federal Supreme Court in Germany ruled that the square design was not an “essential utility property of chocolate” and therefore the registration remained valid. However, it did refer back to the Federal Patent Court to decide whether the shape was a characteristic of the product itself. The Federal Patent Court held in 2018 that, given that almost all chocolate bars are rectangular in shape, and a square is simply a special rectangle, it did not go far enough to give the product a significant value. Therefore, the ground for refusal on the basis of a shape adding significant value to a product did not apply.
In the recent decision of July 2020, the Federal Court of Justice maintained this position (“a square is nothing but a special rectangle”) and refused Milka’s cancellation action. The 3D trade mark does not exclusively consist of a shape that gives the product significant value.
Whilst this action is based in Germany, it does demonstrate the need to defend 3D trade marks even after registration.
Is 3D trade mark protection worth it?
It can be, understandably, difficult to obtain a 3D trade mark but, once a 3D mark registers, they offer indefinite protection (unlike a design which has a maximum registration period of 25 years). However, obtaining a registration is the first step and this case is a great reminder that 3D trade marks must be maintained and defended even once they have registered.
We strongly recommend maintaining all evidence of creation and use relating to the 3D shape / design. Should the 3D mark be challenged at a later date, this evidence may be crucial.
Also, once a 3D mark or design registers, or even before it registers, we recommend that owners put in place a watching service to monitor unauthorised use. This will allow you to take swift and appropriate action to prevent unauthorised use and maintain a monopoly in the 3D mark.
Not only can our trade mark team help you with the registration of your marks and designs, but our Dupe Killer team can help with protection and enforcement of 3D trade marks and designs.
Dupe Killer is our ground-breaking patent pending AI tool which is trained to know what your design looks like, whether it be an entire product or part of it. Once trained, it searches the internet for copies of your products, even if they don’t carry your brand. It’s the ultimate tool for protecting your unique designs online. Further information can be found at dupekiller.ai
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