In Brazil, the three-dimensional trademark is defined in accordance with the concept adopted by the Brazilian PTO as the “sign consisting of its physical shape which is distinctive in itself and sufficiently able to individualize the products or services to all intent and purpose.”
In other words, three-dimensional trademarks are those recognized only by the shape or form of the product itself or its packaging. Typical examples provided by the PTO itself are: TOBLERONE chocolate, YAKULT drink and the original COCA COLA bottle.
It is worth noting that the specific concept of the three-dimensional trademark matches the very definition for Trademarks set forth in article 122 of the Industrial Property Law Nº 9279/96. In this sense, there has been lot of discussion, even in Brazil, on whether any technical effect associated or present in the shape of the product or its packaging could invalidate the protection of this form or shape as a three-dimensional trademark.
The Brazilian PTO states, “to be registered, a distinctive three-dimensional form of a product or a service should be dissociated from its technical effect.” With all due respect, we disagree with this point of view. In our view, any technical effect coexisting with the shape of the product does not remove the distinctiveness of this shape as a three-dimensional trademark.
As we mentioned at the beginning of this paper, three-dimensional trademarks can be described as those recognized by consumers through the shape of the product, i.e. they are signs immediately identified only by the shape of the product, without any other word, element and/or distinctive sign, such as Word Trademarks (only words), Figurative Trademarks (designs or figures) or Mixed Trademarks (words + figures). Consequently, if the shape of the product can fulfill this role (distinctiveness), there is no reason for denying its registration as a three-dimensional trademark.
One of our clients recently applied for the registration of the shape of one of its products as a three-dimensional trademark in some countries. The shape in question is an innovation and an exception when compared with the shapes and layouts of the products from competitors commonly used on the market.
It seems irrefutable that the consumers will immediately recognize our client´s new product just by looking at it and distinguish its origin. As explained previously, the form of the client’s product is very innovative and completely different from the usual forms used by the other companies competing for the same product. It is also important to emphasize that the three-dimensional trademark application filed by our client is still pending for Examination by the PTO.
In France, however, the local PTO rejected the respective three-dimensional trademark application in the initial examination in a ruling that came as a complete surprise to us, particularly because of the grounds used by the French Examiner. The French Examiner understood that our client was trying to obtain the protection with exclusivity for the very shape of the product which it believes would be possible under the French Trademark Law.
When we discussed this case with our colleagues (attorneys-at-law) in France, we were informed that this decision is quite normal in that country and, consequently, would reduce the chances of success in overturning the provisional refusal. According to our colleagues, the three-dimensional trademarks are underused compared to other traditional trademarks. In practice, the lack of distinctiveness and technical effects associated with the form of products are the most frequent grounds for rejecting three-dimensional trademark applications in France.
Our colleagues say that the very intention of three-dimensional trademarks is largely unexplored by legal doctrine and Court Decisions. In this scenario, our firm, along with our French colleagues, made great efforts to persuade, through a proper appeal, the French PTO’s Examiner that the shape of the product developed by our client was highly distinctive and significantly different from those that employ the common shape used by the competitors for same product.
It was also argued that the application for a three-dimensional trademark in the name of our client was totally in accordance with the provision of article 711-1 of the French trademark law which states: “A trademark or service mark is a sign capable of graphic representation on the following terms: (…)
c) Figurative signs such as: devices, labels, seals, selvedges, reliefs, holograms, logos, synthesized images; shapes, particularly those of a product or its packaging, or those that identify a service; arrangements, combinations or shades of color.
In fact, considering that the French law allows registering the distinctive shape of a product as a trademark, it would not make sense to refuse or reject the three-dimensional trademark application filed by the client based on the ground that such a trademark lacks distinctive character because it represents the very shape of the product. Therefore, it is our understanding that the provisional refusal issued against our client’s trademark application failed to follow the law.
Nevertheless, the distinctive character of the client’s product was shown when compared to those put on the market by the competitors. Fortunately, after almost two years waiting for the appreciation of the French PTO, the appeal filed against the rejection decision was accepted and, as a result, the three-dimensional application filed by our client was granted. According to our French colleagues, this case created useful administrative jurisprudence.
For us, this case is very interesting and helps offset a certain resistance we constantly face in obtaining the protection of three-dimensional trademarks, as France has similar law and rules in relation to this matter. In our opinion, it is important to reduce obstacles to achieve the protection of distinctive shapes or forms as three-dimensional trademarks, even if these shapes have or are associated with some eventual technical effect. In our understanding, there would be a chance to obtain a double protection in these cases: one for the shape or the form of the product as a three-dimensional trademark and the other for the technical effect through patents.