On the face of it, a KitKat and a London black cab might not have much in common. The manufacturers of both products recently discovered that trademarking a shape is a complex and challenging aspect of intellectual property protection.
The ‘person in the street’ might well think that a KitKat and a London cab have recognisable shapes. So they ought to be things that can be protected. Unfortunately, it’s not that simple.
You might also ask why, given that both products have been around for years, their makers had a sudden impulse to seek trademark protection? Here I find the motivation of LTC (makers of the black cab) easier to understand.
They are facing imminent competition from an electric hybrid Metrocab. Presumably, familiarity with the classic black cab design would make it more recognisable and, therefore, preferred by customers and operators.
With KitKat I can only assume that they thought the approval would be straightforward (which initially it was), and that nobody would challenge it (which, unfortunately, Cadbury’s did). Bear in mind too that the KitKat logo is already protected.
Why did these Trademark Applications Fail?
Trademark regulations have been formulated to prevent businesses from using (or misusing) this form if IP protection to monopolise technical or functional characteristics.
Trademark protection is not applicable if a product:
- Consists of a shape which results from the nature of the goods.
- Has a shape which gives substantial value to the goods.
- Has a shape which is necessary to obtain a technical result.
If the application passes these criteria the shape must also be sufficiently different from other products. In the mind of a reasonable person, the shape would be synonymous with the product.
In the case of the black cab it was decided that the features of the shape were not sufficiently different from norms in the automotive industry. And, after nearly a decade of legal wrangling, the Court of Appeal decided that the KitKat shape lacked the distinctive characteristics needed to be considered a ‘badge of origin.’
So is trying to trademark a shape pointless?
Trademarking a distinctive product shape may still be worthwhile. You need to balance out whether it really would give you a competitive advantage alongside the likelihood of being challenged and the chances of success.
You may be better advised to go for registered design rights or to rely on features such as a 2D logo to make your product stand out in the minds of your customers.
If you’re unsure what option is best for you, give us a call and we’ll be happy to advise.