THREE-DIMENSIONAL TRADEMARK OR REGISTRATION OF DESIGN

Three-dimensional (3D) trademark protects the shape of products. The holder or holders of a 3D trademark are able to prevent competitors from using packaging or products with a three-dimensional shape that can confuse consumers with theirs.

3D trademark registration is appropriate for those types of products, or parts of them,whose 3D appearance adequately identifies the trademark. This is what happens with the Coca-Cola bottle, the ColaCao can and the Toblerone packaging.

The guarantee of this trademark, as ascertained in the legal definition of the Trademark Law’s Article 4.1, is that goods or services bearing it have been manufactured or supplied by a company which is responsible for its quality.

The essential part is the distinguishing feature that identifies a company’s product or service and its qualities. The susceptible graphical representation marks that constitute the trademark fulfill this function.

The key point is to avoid risking any confusion, since it is essential to be able to distinguish the trademark products and services in the market, so that the average consumer does not confuse them with others and wrongly associates them with another business source.

In this aspect the label, the back label and packaging, and product shape are unquestionably included. We refer to the three-dimensional trademark.

Recalling the definition of trademarks given in the Trademark Law’s Article 4.1 which highlights its distinctive feature, it is a logical conclusion that labeling and packaging areincluded within this sphere; currently, rather than ordering a product from a sales person, the consumer can choose it instantly in supermarkets or department stores, so that the external appearance is of far reaching differentiating importance: it is the distinctiveness of the trademarks packaging, with or without labeling.

The law, based on different rulings, has provided protection to bottle and label packaging-(Bayleys alcoholic beverage) in 19 May 1993 and 29 October 1994 Judgments; the packaging, shape and colour of the can (COLA-CAO) in 23 February 1998 Judgment; and specifically addressed, although the risk of confusion was not appreciated, in 8 May 1997(the case ofPOMPADOUR/BEN-HUR) and 5 June 5 1997 Judgments (the case of VIDALSASSOON).

Difference between a three-dimensional trademark and a community design
Two forms of protection are possible.

A design is protected if it meets the legal requirements for novelty and individual character at the time of submission. Design protection covers the shape, line and configuration of a product in which the design is incorporated or applied.

The granting of a 3D trademark takes place if it is considered that the product has marks that distinguish the applicant’s products from those of another similar company.

The protection afforded to a 3D trademark is related to the distinctive character rof the marks themselves compared to reproductions and identical marks with visual, phonetic or conceptual similarities that could lead to confusion.

For example, a package can be protected as a 3D trademark and as a registered design if it meets legal requirements: a novel shape becomes synonymous with the products of a company and can therefore be registered as a trademark, as well as being protected as design for its uniqueness and novelty.

Both registrations, 3D trademark and industrial design, are not the same. Industrial design protects the aesthetic quality of the objector product. The 3D trademark protects the trademark identification through shape and visual image.

Three-dimensional trademark protection compared to design

Registration of a 3D trademark protects the distinctiveness of the trademark compared with other existing marks that are being used for the same goods or services, while the design protects the novelty and uniqueness of the products.

Avery original shape cannot be registered as a 3D trademark if it does not fulfill the condition of being distinctive with respect to the products or services which have been submitted.

A product, to which a design has been applied, that has been marketed years before submitting the registration, will be registered but any third party could declare the registration null for lack of novelty.

In fact, the novelty feature is not applied to trademarks and the distinctive feature is not applied to designs.

Duration of protection in each case
Trademarks do not have any time limit (they can be renewed indefinitely for periods of 10 years), while registered designs have a maximum duration of 25 years from the date of application for registration.