Thinking of trademarking a product shape? by Shahla Syed

posted in: Legal Interest 0

It is logical to think about protecting a product shape as a trademark.  However it is not always that easy as there are three main restrictions that apply to protecting the shape of a design.

The first is if the shape results from the nature of the goods themselves.  This was decided in a case Hauck v Stokke in which the protection of the Tripp-Trapp children’s chair was the subject.

The second is if the shape is necessary to obtain a technical result.  So shapes are excluded if their essential characteristics perform a technical function.

The third is if the shape gives substantial value to the goods. In the Hauck v Stokke case it was pointed out that shapes having an aesthetic element can be excluded.

In a 2016 case the London Taxi Company tried to claim rights to the shape of the black cab, and to suggest that another taxi company had tried to copy them. The decision ruled that the shape was not an exclusive registered trademark.

Their recent appeal was rejected on the same earlier grounds – that the shape was not distinctive enough.  This demonstrates how difficult it is to protect a product shape as a trademark – as we know how iconic the black cabs are to London.  Watch this space as The London Taxi Company may take the case to the Supreme Court.

For advice on intellectual property rights please call Shahla Syed on 01905 731 731.