(a) the shape of the goods, which results from the nature of the goods themselves; or trademark rights may also be lost due to genericity. Sometimes, marks that are originally distinctive may become generic over time and thereby lose their trademark protectionKellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938). A word is considered generic if, in the minds of a large majority of the public, it refers to a broad genre or type of product rather than a specific source or manufacturer. For example, the term “thermos” has become a generic term and is no longer protected by a trademark. Although it once refers to a specific manufacturer, today the term represents the general nature of the product. Similarly, “aspirin” and “cellophane” were considered generic.
Bayer Co. v. United Drug Co., 272 F.505 (S.D.N.Y. 1921). In deciding whether a term is generic, courts will often resort to dictionary definitions, use of the term in newspapers and magazines, and any evidence of attempts by the trademark owner to monitor his trademark. U.S. Trademark Act (15 U.S.C. § 1052(e)(5)) provides that a proposed trademark may not be registered if it “relates to a matter that is functional as a whole.” This applies to colors, sounds as well as packaging designs. The United States Patent and Trademark Office (“USPTO”) does not grant trademark registration or exclusivity that trademark registration offers if it excludes competitors from the use of a functional design.
A four-factor test was introduced to determine whether a container design is functional: 1) whether there is a utility model that reveals the useful benefits of the design to be registered; (2) whether the applicant`s advertising promotes the useful advantages of the design; (3) whether there are other designs that serve the same utilitarian purpose; and (4) whether the design is the result of a relatively simple or inexpensive manufacturing process. Chassis designs often fail functional testing due to at least one of the above factors, as packages are intended to be inherently functional. But it is possible to incorporate design features into purely aesthetic packaging, such as the shape of the iconic Coca-Cola bottle that has been a trademark for decades. Functional designs, such as However, bottle designs that offer efficient stacking or casting methods may be rejected based on the test described above. If the shape is an integral part of the goods, it is also not registrable as a trademark. For example, if you make a booster seat for children, there are not many ways to design such a product. You cannot protect the functional design of the booster seat, but if you add a decorative element to the seat, that decorative element would be registrable. A manufacturer can certainly add a logo or word mark to the products and thus identify the origin of the products, which is the whole point of trademark law. It is also important to note that 3-dimensional marks include both the shape and packaging of a product. For example, in Ferrero Rocher v.
Ruchi International, the Delhi High Court awarded damages to the plaintiff to ensure the protection of its trade dress. This case allowed Ferrero Rocher to claim the protection of its trademark for its packaging, a 3-dimensional trademark. The USPTO may also refuse to register a packaging design if it has no intrinsic distinctiveness. When assessing the distinctiveness of a design, several factors must be taken into account, in particular if it is: (1) a “common” basic shape or a “common” design; 2) is unique or unusual in a particular field; (3) is a simple refinement of a commonly accepted and known form of ornamentation for a particular category of products; or (4) is likely to create a different commercial impression than the accompanying words. The average consumer may think that bottles of their favorite wines are available in standard forms that can be used free of charge by all producers. However, bottle shapes may be protected as trademarks provided that they meet the required requirements. The defendant`s contention that the registration of a design for the bottle under the Design Act 2000 was significant in so far as the registration had been granted only to the satisfaction of the authority that there was no other identical or similar design was not accepted by the court, because an existing design registration would affect the applicant`s right to bring an action for derogation. does not affect negatively. Section 27(2) of the Trade Marks Act 1999 provides that nothing in that Act shall affect the right of action against any person for the transfer of goods or services.
§ 27 para. 2 is a legal recognition of the principle that the remedy for disclosure is based on the common law. A descriptive mark is one that directly describes, rather than suggests, a characteristic or quality of the underlying product (e.g., colour, odour, function, dimensions or ingredients). For example, “Holiday Inn,” “All Bran,” and “Vision Center” all describe some aspect of the underlying product or service (or hotel rooms, breakfast cereal, visual services). They tell us something about the product. Unlike arbitrary or suggestive marks, descriptive marks are not inherently distinctive and are protected only if they have acquired a “secondary meaning”. Descriptive marks must overcome this additional hurdle because they are useful terms to describe the underlying product and giving a particular producer the exclusive right to use this term could confer an unfair advantage. (b) the shape of the good necessary to obtain a technical result; or If you would like to know how Lexology can advance your content marketing strategy, please email [email protected].
A distinctive shape of a product or its packaging can also serve as a trademark. The Coca-Cola Company has a trademark registration for the distinctive shape of its fluted Coca-Cola bottles. The Swiss chocolate brand Toblerone has a registered trademark on the distinctive triangular configuration of its iconic “peaks and valleys” chocolate bars. If a party owns the rights to a particular trademark, it may sue subsequent parties for trademark infringement. 15 U.S.C. §§ 1114, 1125. The standard is “likelihood of confusion”. More specifically, the use of a trade mark in connection with the sale of goods constitutes an infringement if it is likely to mislead the consumer as to the origin of those goods or as to the sponsorship or authorisation of such goods. In deciding whether consumers are likely to be confused, courts typically consider a number of factors, including: (1) brand strength; 2. proximity of goods; 3. the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of the marketing channels used; (6) the level of prudence shown by the average buyer; (7) the intention of the defendant. Polaroid Corp.
v. Polarad Elect. Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820 (1961). Successful plaintiffs are entitled to a wide range of remedies under federal law. These plaintiffs are regularly granted injunctions against further infringement or dilution of the use of the mark. 15 U.S.C. § 1116(A). Financial relief may also be available in trademark infringement actions, including: (1) the defendant`s profits, (2) the plaintiff`s harm, and (3) the costs of the action. 15 U.S.C. § 1117(A).
Damages can be tripled if bad faith is proven. In trademark dilution actions, however, damages are only possible if the defendant intentionally acted with the plaintiff`s goodwill when using the trademark. Otherwise, plaintiffs in a dilution action are limited to an injunction. 15 U.S.C. § 1125(c). In particular, the Board of Appeal discussed the fact that the goods protected by the registered mark were not bottles as such, but beverages. It noted that, as liquids, they could not have a shape dictated by the nature of the product, as they could be packed in containers whose shape could vary. Finally, the Board of Appeal considered that the shape of the bottle and its golden colour did not confer any substantial value on the goods, either individually or collectively (ground for exclusion). Finally, a generic mark is a mark that describes the general category to which the underlying product belongs. For example, the term “computer” is an umbrella term for computer hardware.
Generic trademarks do not benefit from trademark protection. Thus, a manufacturer selling computers under the brand name `Computer` (or `Apple` apples`, etc.) would not have an exclusive right to use that term for that product. Generic terms are not protected by trademark law because they are simply too useful to identify a particular product. Giving a single producer control over the use of the term would give that producer too great a competitive advantage. In some circumstances, terms that are not originally generic may become generic over time (a process called “genericity”) and thus become unprotected.