In this appeal to the Appointed Person, Thomas Mitcheson QC looked at the usual test for distinctiveness: whether the 3D mark departs significantly from the norms or customs of the sector. But is meeting that test both necessary and sufficient for a finding of distinctiveness?

We wonder when we will get the answers that give our clients the means to fend off copycat products.

Background

At a hearing in January 2022, the UKIPO refused registration of this 3D mark for the shape of a robotic lawnmower.

The applicant claimed a host of unusual features, but the Hearing Officer found the only features of the mark the average consumer would notice were the twin body design, and the ‘bridge’ straddling it. The Appointed Person found him entitled to reach that conclusion, and to conclude that these are the aspects that need to be put to the test: do they confer distinctive character on the mark?

Norms and Customs of the Sector

This case turned on the common approach: that only a product shape that departs significantly from the norms or customs of the sector can be distinctive. The last 20 years of UK and EU case law has agreed that departing from the norms and customs is necessary for a finding of distinctiveness. But we don’t yet have clarity as to whether passing this test is sufficient for distinctiveness. Is something more needed, for the shape to convey trade mark significance?

This uncertainty prompted the Registrar to ask the Appointed Person to decide on the ‘sufficiency’ issue. But while agreeing it would be useful to have the guidance, the Appointed Person excused himself from making that decision, since the mower shape wasn’t enough of a departure from the norms to meet the ‘necessary’ test. So, the mark was not distinctive.

Stobbs View

The Appointed Person gave a ‘tentative observation’ that we should not be distracted by the necessary/ sufficient question, and that ultimately the statute contains the correct test. Since the tests established in case law are developed to help us correctly interpret and apply the statute, this feels like an unhelpful view.

He also raised the question as to whether his guidance on the necessary / sufficient question, as an Appointed Person, would be authoritative enough to guide future policy. He advised that appeals turning on an unclear point of principle should be appealed to the High Court if they are going to resolve the direction of practice in future. While it’s helpful to have a question like this decided by as high an authority as possible, we at Stobbs feel there is no need for an Appointed Person to shy away from giving his decisions, as every guidance is useful.

As a current trend, there seems to be reluctance at UK tribunals to decide whether departing from the norms of the sector is necessary and sufficient for distinctiveness of the shape of a product, or just necessary but insufficient. While Mr Mitcheson also sees ambiguity in the CJEU’s judgments (in Mag Instrument Inc, Freixenet, Wajos), to our reading the CJEU in contrast appears more comfortable in taking a view – that it is necessary and also sufficient.

Whichever way the UK is going to fall on this question, we could really use the question being answered in a suitable forum. Our clients and this applicant are not alone in needing protection for the 3D shape of their products, as the copycat market for premium brands is rife and growing. Design right will give a level of protection for the shape of a product for a decent period of time, but a trade mark registration is an invaluable tool for combatting lookalike branding and shapes which take unfair advantage of the original’s reputation.