One will probably find that retail stores this month, in particular, are a test of one’s will power. Not only does one have to hold strong whilst moving through the gauntlet of chocolates and sweets when queuing for the teller, but Easter also brings with it a barrage of chocolate bunnies and eggs as you enter the store, enticing even the strongest of people to cheat on that diet.

Behind the scenes of this tower of chocolate, there is a bun fight between confectionary producers to make their particular brand stand out from the rest; doing everything that they can to attract attention to, and sales for, their products.

Although typical confectionary trade marks are easily recognisable, for example, Cadburys or Nestle, Lunch Bar or Smarties, these marks are not generally or easily applied to the Easter batch of products.  Accordingly, manufacturers attempt to distinguish their products through the use of the more obscure features or marks; applying a more creative means of branding.  One of these features is the distinctive shape of the product, which brand owners hope consumers will use to identify and distinguish, for example, their chocolate bunnies from the rest of the colony of bunnies.

It is one of the more well-known confectionary brand owners, Lindt, who has in the past attempted to secure a monopoly of the shape of its particular chocolate Easter bunny, which together with the gold wrapping, red ribbon and bell will (ideally) attract consumers.  Lindt applied to register, in Europe, the three dimensional shape of its chocolate bunny as a trade mark which it had manufactured since the mid-1990s.

In order for a three dimensional shape to be registrable as a trade mark, it must be capable of distinguishing.  The distinctiveness of a trade mark meant that the mark applied for should be able to identify goods as originating from one trader and so distinguish them from the goods of another trader.   It was ultimately held that Lindt’s particular bunny shape was not capable of distinguishing as it was a typical ‘seasonal’ shape used for Easter chocolate confectionery and, in particular, the shape of the sitting bunny itself, as well as the ears, eyes or whiskers did not change the fact that it was still just a bunny.

However, not all shape mark applications meet this same fate, and there are a number of trade marks registered every year in South Africa, securing protection over three dimensional shapes.  A great example of a distinctive shape mark in confectionary is the triangular shape of the product and packaging of Toblerone chocolate bars.  Without sight of the TOBLERONE® trade mark, one can immediately recognise and distinguish Toblerone chocolate from other confectionary.

The alcohol and perfumery industries are industries in which much regard is given to, and protection sought for, the shape of bottles and containers for goods.  Securing a monopoly of these additional elements of a brand and product provides even greater protection, and assists in keeping and growing a brand owner’s market share.

Accordingly, when developing a product’s brand appearance and packaging, one should have considered regard to the uniqueness of the design, which could possibly be registered as a shape or other trade mark, and to ensure that such design does not infringe a third party’s intellectual property rights.

Publication Name:

Product Shape

Date:

June, 2013

Author:

Andrew Papadopoulos

Practice Area:

Trade Marks