Three-Dimensional Trademarks... Non-Conventional Business Identifiers

18-Nov-2020

In the last decades, a new trend for trademark protection came into force, the so-called “non-conventional trademarks”. Traditionally, the scope of trademark protection was limited to these conventional type of trademarks, namely those incorporate characters, words, logos, pictures, symbols, numbers or a combination thereof, which consist of a distinctive character, sufficiently eligible to serve as an identifier of the commercial origin of products or services and to distinguish traders from each other’s.

Consumers’ attraction became a need to compete in a changeable highly competitive market to take a special advantage over others. In this trend, competitors needed to distinguish their goods and services in a non-traditional manner to attract the attention of customers. Non-conventional brands’ identifiers were one of the tools to obtain the special advantage on one hand, and to widen the scope of protection for these identifiers on the other hand.

Serving as a business identifier, products’ design became a medium for business marketing since these designs distinguish the origin of the products due to their distinctive characters which connect in the mind of consumers with the traders of these products. A product design means the outer appearance of a product or a part thereof. Coca Cola is recognized by consumers through the shape of its bottle. Also, m&m chocolate is recognized through the designed chocolate balls.

Responding to this development, 3D trademarks were found in an aim to widen the scope of trademarks by conferring protection to products’ designs which became a competitive advantage and business assets, by rewarding their owners with the exclusive right of exploitation. 

A local legislative response was needed to include the protection of 3D trademarks under the related Laws. Accordingly, local laws were remodeled through widening the definition of a “Trademark” by including the category of 3D marks to the scope of protection. 

In China, the registration of 3D trademarks is acceptable in principle, though the design must be special and gained fame. Also, in Bahrain, Kuwait, Iran, India, Libya, Morocco, Nigeria, Russia, Pakistan, Sudan, Tunisia, Turkey, UAE, Yemen and Japan registration of a 3D trademark is acceptable.

To be registered as a trademark, a 3D mark must meet the conditions of trademark registration in the concerned country particularly, the significant distinctiveness. 

Based on that, certain elements must be determined prior to conferring a 3D trademark protection to the design of a product, namely, the capability of the design to distinguish the product of a trader from the products of the others without the associated word mark.  Besides to the capability of the said design to grant the owner a competitive advantage over other competitors.
In this context, the following question must be asked, why do traders protect a product design under Trademarks Laws while Industrial Designs Laws provide similar protection for such a design specifically?

TRIPS Agreement provided for the protection of industrial designs. Sub-article (3) of article (26) of the said Agreement requested the member countries to provide a minimum period of (10) years for the protection of industrial designs in their local laws, and no renewal period was mentioned. Accordingly, protecting a product design under Industrial Designs laws means that one will have the exclusive right to exploit the design for a limited period of time which is not renewable. 

Trademarks protection is an indefinite protection in terms of time as long as the owner of the registered trademark renews the term of protection subject to article (18) of the TRIPS Agreement, which provides that member countries must provide in their legislations for a minimum period of 7 years for trademarks protection which is subject to an indefinite renewals.

Serving as a business identifier, it is recommended to protect a product design as a trademark to guarantee the exclusive rights therein for an unlimited period of time rather than the protection under industrial designs law, taking into account, the ability of the design in question to serve as a brand identifier for such a long term.


By: Dr. Nida’ N. Goussous
Talal Abu-Ghazaleh Legal





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