Modern trends in all aspects of life call us to be unique, to unveil our individuality, to challenge ourselves and to create revolutionary start-ups. Once a bright idea lights its way and a brand new product is born, it’s time to invent a catchy name and/or catchy shape to showcase it in line with its common predecessors. This is where trademarks come in, names used to individualize the property of legal persons or individual entrepreneurs.
Part VI of the Russian Civil Code provides that verbal, figurative, three-dimensional and other designations or their combinations can be registered as trademarks. A mark may be registered in any color or combination. The list of names likely to be registered as trademarks provided for by the Civil Code is not exhaustive; Regulations on Compilation, Submission and Examination of Documents for State Registration of Trademarks (hereinafter – “Regulations”) provide an expanded list of signs eligible for protection in Russia , including unconventional marks such as sound marks, light marks, motion marks marks, holographic marks, tactile marks, position marks, olfactory marks, taste marks, marks consisting exclusively of one or more colors. Considering the fact that obtaining protection for these types of designations is quite a difficult procedure, most manufacturers use more traditional signs, among which, however, three-dimensional designations stand out.
What is a three-dimensional mark?
The regulations indicate that three-dimensional marks represent three-dimensional objects, figures and combinations of lines and figures in a spatial arrangement, which can, in fact, belong to three categories: the shape of the product or part of it ci, the shape of the product packaging, and the shape not related to the product.
Three-dimensional marks are subject to the same examination procedure as other designations; the examination procedure in the Russian Federation is conducted on both absolute and relative grounds and one of the main problems when examining three-dimensional marks is to establish their inherent distinctiveness in relation to the goods claimed.
A positional mark is a mark consisting of the specific way in which the mark is placed or affixed to the product.
Of course, three-dimensional marks which represent a shape unrelated to the product generally have a distinctive character; for example, a three-dimensional image of a turtle for light projectors.
It also seems quite clear that the three-dimensional designations which represent the shape of the goods, which is determined solely or mainly by the property or purpose of the goods, or the shape of the packaging of the goods which is customary to the specific article , cannot be registered as trademarks due to lack of distinctive character; for example, a bottle shape for bottles.
The Guidelines for the Implementation of Administrative Procedures and Actions for State Registration of Trademarks (hereinafter – “Guidelines”) indicate that, in determining the distinctiveness of a three-dimensional designation representing the shape of the product, it is imperative to establish whether the shape itself is capable of distinguishing the applicant’s products from similar products of others, in other words, whether consumers can recognize and choose the applicant’s wares exclusively by its shape. A similar criterion is applied to define the distinctive character of a three-dimensional sign being the shape of the packaging of the product. Good examples of three-dimensional marks that pass the registrability test are the shape of a rabbit for confectionery and the shape of a lady’s shoe for perfume.
Interestingly, a designation that represents a common shape of the article or its packaging can still be registered as a three-dimensional mark, with the shape being disclaimed provided that the designation contains other distinctive elements, such as words, graphics or combinations. these, which dominate the standard form of the article or its packaging.
What to protect or not to protect?
The possibility of obtaining the protection of a three-dimensional mark subject to a disclaimer as to the form of the article invites reflection. If the shape of an item is ordinary and utilitarian and is subject to a disclaimer, can that mark still be considered three-dimensional? While the shape is excluded from separate legal protection and the mark registered as a whole, doesn’t that mean that a mark actually becomes a position mark in its nature? A positional mark is a mark consisting of the specific way in which the mark is placed or affixed to the product. The outline of such a designation is drawn in broken lines indicating that the shape of a product is not claimed as a feature of the mark but gives the idea of the placement of the mark on the goods. As such, a waiver of the shape of the article in a three-dimensional mark provides for the same, does it not? For example, if a designation representing a three-dimensional bottle in a common shape with a label attached to it is registered as a mark with the disclaimer of the shape of a bottle, should it be treated as if protection were actually granted? to the label placed on a specific part of the bottle? Or another question to raise is whether the use of the label on the bottle of another shape can be considered as a correct use of the registered three-dimensional mark? In the Russian Federation, trademarks are protected exactly as they are registered; slight changes in the use of the mark are permitted as long as they do not affect the distinctive characteristics of the mark.
Slight changes in the use of the mark are permitted as long as they do not affect the distinctive characteristics of the mark.
Generally, the addition or deletion of unprotected elements (such as simple lines, numbers, obvious technical information) are acceptable changes, but when it comes to the unprotectable form of a three-dimensional mark , whether its substitution for a non-protectable form mark of another outline should be considered a permissible change may be a matter of dispute.
Another aspect of three-dimensional marks that is currently the subject of discussion in the professional IP community, and which is associated with the above speculation, is the definition of a form of a three-dimensional mark, particularly if the form of the products must be defined exclusively by the outline. In terms of establishing the distinctiveness of a three-dimensional designation, perceiving a shape of a product simply as its outline appears to be narrow. Considering the fact that modern technologies allow sophisticated processing of various materials, a shape can be characterized not only by its outline, but also by various decorative elements that are part of a shape and cannot be separated, for example, a unique color combination, a textured surface texture, engraving. Such artistic/decorative elements of a shape of a product can give even a usual shape another level of perception, allowing consumers to identify the manufacturer’s product by its shape, thus making the three-dimensional mark distinctive enough to be used as means of individualization. However, the question is whether, in such a case, an ordinary shape of a product should nevertheless be excluded. Obviously, this is an elaborate ornament that provides distinctiveness to a three-dimensional designation when it has an ordinary shape, but as long as such an ornament is an integral part of a shape, it seems rational to do not deny the form.
Specifics of the exam
Furthermore, whether each element of the form should be considered separately or as an overall representation should be assessed when establishing the distinctiveness of the designation is also debatable. On the one hand, if the shape of an item or packaging has standout elements that grab attention and visually dominate the brand, it may be worth evaluating each element separately. On the other hand, the provisions of the Russian Civil Code provide that a designation consisting of non-distinctive elements which, in combination, create a unique composition which has a completely different level of perception, when considered as a whole, may be recognized as having a distinctive character. In such circumstances, the estimation of the general impression of a three-dimensional mark seems appropriate.
Another argument in favor of estimating the general impression created by a three-dimensional mark stems from the aforementioned fact that decorative elements can be merged with a usual shape, thus making the shape distinctive. An example of such a mark is International Registration No. 1231845 for the GH MUMM three-dimensional bottle, while the shape of a bottle, if considered separately, is common and the red line, if considered separately, lack of distinctiveness, the integrity of the traditional bottle shape and the red line etched into the shape make the bottle design distinctive enough to function as a trademark.
Of course, when examining the distinctive character of a three-dimensional denomination, it is advisable to analyze whether producers generally use such a form of product or packaging due to the fact that there is no alternative to such a form from a technical point of view, in other words, if the claimed form can be considered traditional and functional with regard to the products applied and dictated by the need to obtain a technical result. To obtain an objective picture, it is recommended to study the so-called analog range of forms with a similar purpose to know the common characteristics of these forms. If the range is large enough, then even minor differences from the usual characteristics should be considered sufficient to contribute to the distinctiveness of the shape.
Although there are debatable issues regarding the examination of three-dimensional marks and their scope of protection, these designations can undoubtedly gain popularity among producers, especially in the segment of the beverage industry, being unique means individualization . Word marks are generally considered to be easy to remember, which is true, however, three-dimensional marks have every chance to fill the hearts of consumers because some designations look like a work of art and the art has no need words.