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Trade Mark Law in Shape

05 Jul 2007

The New Zealand Court of Appeal confirmed recently that you can register the shape of a product as a trade mark – but not easily.

What can you register as a trade mark?
Any word, logo, sound, smell, colour or shape can be registered as a trade mark in New Zealand if the trade mark is distinctive of the goods or services you use it on.

It is usually easy to decide whether a word is distinctive.  For example, EXXON could be registered as a trade mark for petrol and related services because EXXON is an invented word and has no meaning.  But the descriptive word APPLE is not a distinctive trade mark for food although it is a distinctive (and registered) trade mark for computers.

Shape trade marks present a unique problem because it is not so easy to decide when a shape is distinctive.

When is the shape of your product registrable as a trade mark?
You can register a shape as a trade mark if there is something about the shape that identifies you as the person who makes the product. But you cannot register a shape as a trade mark if the shape is purely functional.

In the recent Fredco v Miller case, the Court of Appeal had to decide if the shape of a kiwifruit vine tie was distinctive. The court decided the hooks of Miller’s vine tie were distinctive so the particular shape of Miller’s vine tie could be registered as a trade mark.

But some special circumstances helped Miller’s case. Miller had a patent for his vine tie before he applied to register the shape as a trade mark. During the 20-year life of the patent, fruit growers bought millions of his vine ties and got to know and recognise the shape of Miller’s product. The reputation created while the patent was in force supported Miller’s later claim that the shape of his vine tie was distinctive and registrable as a trade mark.

Now that Miller has registered the shape as a trade mark, no other trader can import or sell the same or similar shaped vine tie in New Zealand without infringing the trade mark registration. And unfortunately for other traders (but fortunately for Miller) there are not that many other shapes you can use to design and make a vine tie.

Is the shape of your product registerable as a trade mark?
It is difficult to register a shape as a trade mark in New Zealand.  This problem is not unique to New Zealand and arises in many countries.  Normally you can only register your shape trade mark if you file evidence showing that consumers recognise and connect a particular shaped product only with you.

If your competitors sell their products in the market using the same or similar shape as yours, then it is unlikely that you will be able to register that shape as a trade mark. For example, many traders use the standard two litre ice-cream container to sell their ice-cream. No one trader can claim the standard shaped container identifies their particular ice-cream product alone.

However, if the shape of a product that you sell is unique to you, you may be able to register it as a trade mark. There are about 300 shape trade marks registered in New Zealand including the Toblerone triangle shaped chocolate bar and Coca-Cola’s distinctive wasp-waisted shape bottle.

How can registering the shape of a product as a trade mark help me?
Owning a shape trade mark registration will make your products stand out and give you a competitive advantage. If you own a shape trade mark, you are in a better position to control the market and stop others selling the same or similar shaped product.

If your customers recognise your product because of its unique shape then make the most of your market potential and consider applying to register that shape as a trade mark.

Simon Fogarty
Senior Associate, A J Park Wellington
simon.fogarty@ajpark.com
DDI +64 4 498 3435

An edited version of this article was published in ProDesign magazine Issue 89 July 2007