Registration of Shape Marks

20 November 2009

By Ben Evans

Before the Trade Mark Act 1994 it was not possible to register trade marks for the shape of goods or their packaging.

However by virtue of section 3(2) of the TMA 1994 ('the Act')shape marks can be registered as long as they do not consist exclusively of:

a) the shape which results from the goods themselves;

b) the shape of the goods which is neccessary to achieve a technical result;

c) the shape which gives substantial value to the goods.

As with trade mark law in general the key to circumventing these exclusions is to show that the mark is distinctive. One of the main reasons for previously not allowing shape marks is that a trade mark gives a potentially limitless (in terms of duration) monopoloy protection. Compared with other methods of protection such as registered designs (25 years) this is somewhat dangerous.

The first (and possibly most famous) shape trade mark registered under the act was that of the coca-cola bottle.

Ben Evans is a trainee solicitor specialising in information technology law and intellectual property law with an emphasis on IT, escrow, online and off-line contracts, and the buying and selling of online businesses.