Available in 3D
Partner Fábio Leme and associate Nelsa Barroso of Daniel Advogados compare the registration process of 3D trademarks in Brazil and France
In Brazil, three-dimensional trademarks are those that are recognised by the shape of a product or the packaging that covers it. Classic examples are Toblerone chocolate, Yakult and the original Coca-Cola bottle. It has been frequently discussed, including in Brazil, as to whether a possible technical effect present in the shape of the product or in its packaging would invalidate this shape as a 3D trademark.
In its Manual of Trademarks, the Brazilian Patent and Trademark Office (BPTO) declares that “to be registrable, the distinctive three-dimensional shape of a product or service should be dissociated from the technical effect.”
With all due respect, we do not agree with this position. We consider that any potential technical effect existing in the shape of a product does not remove any possible distinctive character from this visual perspective.
3D trademarks are those that are recognised by the public from the actual shape of the product. In other words, they are marks that are immediately identifiable by the consumer just from the design of the product, without any need of any other element or distinctive mark in their make-up. Therefore, if the shape of a product fulfills this function (distinctiveness), it is our understanding that there can be no reason to forbid or prohibit its registration as a 3D trademark.
Recently, one of our clients requested, in some countries, the registration as a 3D trademark of the shape of its latest model of a hermetic compressor for refrigeration. It is important to clarify that the design of the respective product is absolutely innovative and completely different from the shape, design or common form of this product in the market. Hermetic compressors typically have conventional rounded shapes similar to a globe, as occurs with our client’s other models.
There can be no doubt that when the consumer encounters the original design of our client’s product he will recognise it, identifying moreover its origin or source. It is a highly innovative shape and totally different from the conventional designs still used by its competitors for the same product. The registration application for this 3D trademark is still awaiting examination by the BPTO in Brazil. However, in France, the application was rejected by the local trademark office in a first examination of the merits.
Issued in mid-March 2014, the decision of provisional refusal was a major surprise. It was based on the examiner’s understanding that the trademark should be considered devoid of distinctive character because it represents the actual image of the product that it intends to protect and is therefore incapable of performing the function of designating its origin. On researching the jurisprudence in France, we noticed that this type of decision was common there and that the chances of a reversal were low. Claims for 3D trademarks are rarely made in the country and therefore the principle of the 3D trademark is rarely explored by doctrine or jurisprudence.
As a result, at appellate level, our office consequently spared no effort in seeking support in order to convince the French examiner that the shape of the client’s product differed significantly from the shape generally used for this product in the market. A large amount of documentation was attached to the appeal demonstrating the conventional and usual shapes used by its competitors in their hermetic compressors.
Accordingly, it was argued that the registration application for the client’s 3D trademark was in complete harmony with that set out in Article 711-1 of the French law of trademarks, which established that a trademark of a product or service can be considered a mark capable of graphic representation in the following terms: “Figurative marks such as: labels, seals, selvedges, embossments, holograms, logotypes, synthesised images; shapes, particularly those of a product or its packaging or those that identify a service; arrangements, combinations or tonalities of colour”.
If French law admits the shape of a product for registration as a trademark, it does not make any sense to refuse or reject an application for a 3D trademark based on the foundation that the trademark should be considered devoid of distinctive character because it represents the actual image of the product. Therefore, the decision to reject the registration previously issued by the French trademark office was at odds with the local rule. However, fortunately the appeal against the rejection presented to the French trademark office was granted and the registration application of the client’s 3D trademark was approved, resulting in a significantly useful administrative jurisprudence.
For us, in Brazil, the case is of interest and contributes to removing a certain resistance that we also feel when trying to obtain protection for the shape of products or their packaging as 3D trademarks. The Brazilian legislation is very similar to the French.
It is necessary to remove barriers for the protection of shapes that have sufficient distinctiveness as 3D trademarks in Brazil and other locations, even if they are associated with a technical effect. There is an opening here for double protection: one for the shape of the product as a 3D trademark and another for the technical effect by means of patent.