Moon Boot Kicked Out but Guerlain’s Lipstick Shapes Up What are shape marks? Section 1 of the Trade Marks Act 1994 specifically includes “the shape of goods or their packaging” within the definition of a trade mark. It also provides that a mark must be “capable of distinguishing goods of one undertaking from those of other undertakings.” If a shape is common in the trade, or has become so, it cannot perform that essential function of identifying the brand owner. Consumers will simply see it as another example of the product in question and will use other visual markings, such as words or logos, in order to identify the brand. Examples of “pure” shapes (without additional markings) which have made the grade include the shapes shown at 1 and 2 below registered respectively for chocolate and cereal preparations. Two recent decisions of the General Court of the European Court of Justice reached contrasting conclusions on whether the specific shapes under consideration could be validly registered marks. (1)
(2)
Moon Boot Tecnica Group SpA (Tecnica) registered the shape of its Moon Boot product in the European Union in 2011 for (among others) footwear and various parts of footwear, being soles, heelpieces and uppers. The registered mark is:
Tecnica successfully sued a Swiss company for trade mark infringement based on its EU registration and the defendant hit back, filing an action for the registration to be struck off. It claimed the mark was not capable of distinguishing trade origin in the marketplace and was invalidly registered. The Cancellation Division and Board of Appeal agreed. Tecnica took this to the General Court but lost again and its registration was partially cancelled insofar as the footwear goods were concerned. The decision is here. The General Court referred to accepted principles in shape mark law. Critical here was the point that where a shape mark consists purely of the appearance of the product
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