This article first appeared in Bugnion Journal – To view the Journal in full click here

Shape is an important factor behind purchasing decisions by consumers, especially in the fashion sector, where the aesthetic appearance of products plays a key role. Fashion designer Pierre Cardin once remarked: “What comes first is the shape. Then the material, which expresses volumes, fluidity, languor. Colour is merely the last feature”.

In terms of the various options offered for protecting shapes, trademarks are certainly preferable thanks to their potentially permanent protection.

European Union law does not contain any definition of “shape”, a fact which recently resulted in the EU Court of Justice understanding this concept as “a series of lines or boundaries that delimit the product in space” (C-163/18). In other words, everything that is not delimited in space (through boundaries, dimensions and volumes) will be excluded by the concept of “shape”.

Alongside this limit, deriving from the notion of “shape”, there are other legislative requirements that contribute to making the obtainment of shape trademarks a genuine obstacle course.

The first one is “distinctive character”. Although EU case law has reiterated that the distinctive character of a product’s shape must be examined in the same way as for other types of marks, it’s undeniable that a lack of distinctiveness is more frequently found for shape trademarks (than for other types of marks), since average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element. EUIPO recently rejected a three-dimensional trademark application (No. 15679426), consisting in the shape of a shoe by the fashion designer Manolo Blahnik, filed for “footwear”, considered to be devoid of distinctive capacity.

To overcome this obstacle, in the event of intense use in the market, the “secondary meaning” requirement is often invoked. However, the difficulty of proving a sign’s acquired distinctiveness in relation to shape should not be underestimated, especially if this requirement needs to be met in all EU countries!

Once over the hurdle of distinctive character, a shape trademark may be registered only if there are no further legislative impediments. With regard to fashion products, the most common impediment is certainly that of “substantial value”, which relates to shapes that, on their own, thanks to their power of attraction and aesthetic-ornamental value, can determine consumer choices. It’s clear that such a situation is rather frequent in the fashion sector, where product aesthetics play a key role.

The impediment cannot be remedied by the fact that the shape which lends a product its substantial value has also acquired the function of identifying its entrepreneurial origin, since the “secondary meaning” does not apply to get around the “substantial value” obstacle (C-371/06). This is clearly to prevent permanent monopolies on aesthetic solutions even in the event of a commercial success of such magnitude that shapes can be deemed to have acquired, along with an aesthetic value, a distinctive function.

But fashion protagonists should remember that a trademark is just one of the tools of shape protection. The easiest mistake to make is to rely only on the protection offered by trademarks, thus waiving the opportunity to protect the shape of a product or its packaging first as a design, provided that all legal requirements are met.

© BUGNION S.p.A. – May 2019