Spotlight On: How can a shape be protected?

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  • Background:
    • This blog has recently featured a couple of posts on how Bang & Olufsen sought to protect the shape of one of their speakers, as shown above.  This appears to be their Beolab 8002 speaker.
    • One recent post (here) looks at how Bang & Olufsen obtained registered design protection for this shape.
    • Another recent post (here) explains why trademark protection wasn’t available for this shape on this occasion.
    • This post looks at how registered designs and trademarks can be used to protect shapes in more detail.
  • Registered designs:
    • Registered designs protect the way all or part of a product looks.
    • Registered designs are therefore particularly suited to protecting the shape of all or part of a product.
    • Registered designs have a limited term of protection, unlike trademarks which can provide indefinite protection.
  • Trademarks:
    • Unlike registered designs (and patents), which have a limited term of protection, trademarks can last forever, provided they are looked after.
    • This potentially indefinite protection can be very valuable to a business.
    • However, the threshold for registering shapes as trademarks is high; as an indicator of trade origin (the purpose of a trademark), consumers must be able to identify the origin of the goods based on the trademark alone (i.e. the shape) in order for the trademark to be registrable.
    • There are also additional requirements that a shape must satisfy before it can be registered as a trademark. The shape must not:
      1. result from the nature of the goods themselves;
      2. be necessary to obtain a technical result; or
      3. give substantial value to the goods.
    • In this case, the application to register the shape of this speaker as a Community Trade Mark was initially rejected and the rejection was upheld on an appeal, on the basis that the mark applied for added substantial value to the speakers (see item 3 above). The trademark application was therefore refused.
    • This finding was partly based on the finding of fact that the aesthetic characteristics of the shape had been found to be an important selling point of the speakers, particularly in terms of their branding.
    • This ground for refusal is intended to draw a line between registered and unregistered design protection (having a limited term) and trademark protection (having a potentially infinite term).
  • Patents:
    • While the focus of this particular post is on registered designs and trademarks, it is worth mentioning, in passing, that a patent might also be used to protect the shape of an item, for example if having the item in that particular shape solves a problem/provides an advantage in a non-obvious way.
    • For example, if the particular shape of a speaker improved its acoustic properties in a non-obvious way, it may be possible to obtain a patent.
  • Conclusions:
    • While, in this particular instance, trademark protection was not available for the shape of a product, it may be available in other cases (i.e. where none of items 1-3 above applies).
    • Registered designs and trademarks each have pros and cons compared to the other, so having both a registered design and a trademark may provide stronger protection than just having a registered design or a trademark in some cases.
    • This is a complex and continually developing area of law and the above should in no way be considered to be advice on how to protect shapes; just ‘food for thought’.

Post by Iain Russell, Patent and Design Attorney, Alex Crick, Patent Scientist, and Sharon Daboul, Trademark Attorney, EIP

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