ABSTRACT
This article argues for a greater normative role in assessing inherent distinctiveness when deciding on the registrability of three-dimensional shape trade marks. It also argues that these normative considerations of distinctiveness align with how consumers perceive shape marks.
This article begins by considering the CJEU’s jurisprudence on the distinctiveness of shape marks, highlighting a standard that is significantly higher than that applied for other forms of marks. It argues that this restrictive approach for shape marks is correct (although it is unfortunate that it is not explicitly acknowledged), not only because consumers find it more difficult to recall shape marks than traditional forms of marks, but also because competition-based interests require that certain shape marks are kept free for other traders to use. The consumer perception argument is based on psycholinguistic literature concerning semantic ambiguity, while the ‘need to keep free’ argument draws on observations from cognitive psychology that human shape recognition is based on a limited number of ‘primitive shapes’ that must be available for all to use. While there is a significant literature on the psychological of when marks come into conflict, ie confusion and dilution, less is written on the psychology of distinctiveness, and this article is the first detailed consideration of its application when assessing the distinctiveness of shape marks.
The article concludes with a discussion of the implications of these findings for the law. It is argued that the normative content of the distinctiveness test should be recognised explicitly, and the continued failure to do so brings the legitimacy of the law into question. However, the psychological literature suggests that the law should go further by requiring proof of secondary meaning for all shape marks. The article concludes by noting that while functionality has traditionally been seen as the tool for protecting competitors’ interests in relation to shape marks, the rigid nature of the functionality test, as well as the EUIPO’s reluctance to consider it in individual shape mark cases, makes it unsuited to protecting competitors’ interests in using basic shapes and meaning that the job of protecting competition falls to distinctiveness.
Simon, Ilanah, Rethinking Distinctiveness of Shape Trade Marks (August 1, 2024), Faculty of Laws University College London Law Research Paper Forthcoming.
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