Whilst the most common way to register a trademark is using a word or logo “mark”, there are other options available if your business uses something that is sufficiently distinctive enough, for example a colour, a smell or a shape.
The common hurdles for registering a trademark that must be overcome include:
- the “mark” must not be descriptive or generic or common place in the industry;
- it doesn’t infringe an existing “mark” in the same class of goods or services; and
- it can’t be misleading or offensive.
Although the general rule is that the mark must be distinctive, there is still a possibility that it can be registered if it can be shown that it has “acquired a distinctive character in relation to the goods or services for which it is registered”.
A good example of this is the shape of the iconic London black cab.
In 2014 an application was made by the London Taxi Corporation (“LTC”) to register the shape and design of the London black cab. Whilst the application was initially refused the LTC were able to demonstrate to the Intellectual Property Office (“IPO”) that there was sufficient evidence to prove that both the shape and design were distinctive enough.
Unfortunately for the LTC, when the application was eventually published, it was opposed by a rival company who claimed that the design was too generic or, in other words, it was a car. This resulted in the Court of Appeal rejecting the LTC’s argument and refusing their application.
This ruling is important for the business owner who is looking to register an unusual “mark” as, although the LTC didn’t succeed, it did result in up to date, useful guidelines.
So what do these guidelines mean?
Well, one of the most important factors is whether or not the “average consumer” associates the “mark” with the product or service being offered. In the LTC case, the Court of Appeal ruled that the “average consumer” saw a taxi and not specifically a “London Black Cab”. Therefore it was not “sufficiently distinct”.
This isn’t the first time that the courts have made similar rulings when it comes to the registration of shapes as trademarks. Another great example that people can relate to is Nestle’s attempt to register the Kit Kat shape – it was ruled that because there were other similarly shaped chocolate bars on the market, it wasn’t capable of being protected.
The end result is that it remains difficult to register a shape as a trademark. The reason for this is that when you register a trademark, you gain a monopoly on that “mark” – therefore if it is something that is in regular or day to day use, the courts will be reluctant to stop people from being able to use it.