Starting off the week, Pankhuri brought us a reminder on the upcoming deadline for the SpicyIP Fellowship 2017-18. Applications close in five days (the 10th of March), and please refer to her post for all relevant details on the Fellowship.
Our highlight of the week is Prateek’s detailed six-part post on a series of European cases that deal with shape and functional trademarks:
In Part I, Prateek introduced his six-part series by first, reproducing Indian and European law on the subject, and second – clarifying that shape marks are not inherently distinctive, and require acquired distinctiveness to be achieved for trademark registration.
Part II centred around the ECJ’s ruling in Koninklihke Philips v. Remington. The case arose due to Philips trademark application for their electric razor, in a 3D shape. The Court highlighted that trademarks of shapes that were purely functional were not allowed to be protected, and no level of acquired distinctiveness could overrule this. Further, the Court looked into Philips de facto monopoly in the market, holding that it would not preclude the acquisition of acquired distinctiveness.
Prateek then analysed Lego Juris A/s v. Mega Brands Inc. in Part III. The decision centred around whether the shape of a lego brick qualified for trademark protection. European law states that trademarks that consist exclusively of shapes that cause a technical result do not qualify for trademark protection. Prateek analysed two aspects of this: the relevance of alternate shapes while assessing a shape’s functionality, and the method of identifying essential elements of a shape mark.
In Part IV, Prateek looked into Hauck GmbH & Co. v. Stokke A/S. This case, like the others, dealt with the validity of a shape trademark. The post dealt with the different interpretations of a shape which gives ‘substantial value’ to the goods as a bar to trademark registration.
Part V is on the trademark for the Kit Kat shape, as discussed in Société des Produits Nestlé SA v. Cadbury UK Ltd. Prateek highlights two different thresholds of acquired distinctiveness, and explains that the Court found acquired distinctiveness to be achieved only when customers rely on the mark, as opposed to other marks that could also be present.
Part VI picks up where Part V left off, and delves into the essential elements of a shape with respect to trademark registration. Prateek inter alia suggests two conditions to be necessary for a shape to be essential: that the element exists on its own, and that when the shape is removed, the shape substantially differs from the original shape. He promises to follow this up with added analysis on this case.
Pankhuri then ended the week with two announcements. First was on the MIP International Patent Forum 2017 to be held on March 8 & 9 in London. Please read here for details. The second was the announcement of vacancies at the Centre for Innovation, Intellectual Property and Competition (CIIPC) at National Law University, Delhi. The Centre is seeking to engage three full time research fellows (law), and relevant details can be found here.
International Developments
