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Board Resolutions
Protectability of Three-Dimensional Marks





May 7, 1997 

Sponsoring Committee: Nontraditional Trademarks Subcommittee of the Issues and Policy Committee


Resolution

WHEREAS, the protection afforded to three-dimensional shapes (which includes three dimension product and packaging configurations) varies from country to country;

WHEREAS, such variation results in inconsistent protection for three-dimensional shapes that are used to distinguish one’s goods and services from those of another;

WHEREAS, providing trademark protection to three-dimensional shapes that serve as trademarks (which include service marks, certification marks and/or collective marks) will enhance international marketing and product identification;

BE IT RESOLVED, that it is the position of the International Trademark Association that a three-dimensional shape may function as a trademark and, therefore, in appropriate circumstances, should be entitled to trademark recognition, protection and registration.


Background

There is no international consensus on whether three-dimensional shapes are protectable as trademarks.

The European Union’s Harmonization Directive is among the significant contemporary laws that specifically recognize the protectability of three-dimensional shapes or packaging that serve as an indication of source for the relevant goods or services. The Directive excludes from protection “signs which consist exclusively of (a) the shape which results from the nature of the goods themselves, or (b) the shape of goods which is necessary to obtain a technical result, or (c) the shape which gives substantial value to the goods.”

In the Agreement on Trade-related Aspects of Intellectual Property Rights (“TRIPS”) of the World Trade Organization (WTO) the definition of a trademark includes “[a]ny sign capable of distinguishing ...goods or services...”. This definition is arguably broad enough to include three-dimensional marks since at least some shapes and packaging designs are inherently capable of distinguishing any relevant goods and services, and of those that are not, most are likely capable of acquiring distinctiveness through use.

The Trademark Law Treaty provides that only those contracting parties which accept three-dimensional marks for registration are obliged to apply the Treaty to such marks. Countries which do not protect three- dimensional shapes as trademarks are not compelled to do so under the Treaty.

The Madrid Agreement and the Madrid Protocol contemplate protection for three-dimensional shapes, while the North American Free Trade Agreement (NAFTA) includes “the shape of goods or of their packaging” in its definition of a protectable trademark. The Andean Pact permits the registration of three- dimensional shapes as trademarks, excluding from protection marks which consist of shapes or package designs that are ordinary, functional or that provide a functional or technical advantage.

Although shapes of goods and packaging are registrable in Canada as “a distinguishing guise,” registration will occur only if acquired distinctiveness is shown.

The United States law affords protection for a non-functional three-dimensional trademark if it is inherently distinctive of the source of goods or services or has acquired distinctiveness, and is non-functional.

The common arguments against extending protection to three-dimensional shapes are unpersuasive. The primary concern relates to the overlap with other intellectual property protection for shapes, such as under patent rights or copyright. It is the Committee’s view that, the fact that a three-dimensional shape is also protected by industrial design or copyright doctrines, should have no bearing on its ability to be protected as a trademark. Similarly, if an aspect or aspects of a product unrelated to its configuration have been protected by a utility patent, that should not exclude the product configuration from trademark protection. Moreover, generally the doctrines of functionality and distinctiveness adequately guard against the registration of shapes unworthy of trademark protection.

In summary, the Committee believes that it is important for the Board to adopt a position on the protectability of three-dimensional shapes as trademarks. Accordingly, the Committee requests that the Board adopt the foregoing resolution stating that, in appropriate circumstances, three-dimensional shapes are protectable and registrable as trademarks.