BRUSSELS, Belgium — Sometimes, a mere glimpse of a product's silhouette is enough to tell which designer or fashion house created it: the Chanel No 5 perfume bottle, the toe of a Berluti shoe, the unique shape of the Fendi baguette. Today, there is renewed interest in these kinds of classic products as shape and design have made a return in making a product desirable, especially now when consumers don't want their products to scream with logos and bling.
As they look for unbranded products that are recognisable for their design, this also raises the question of whether there is adequate legal protection for these more subtle indications of provenance. This will almost certainly reignite a debate for strong design right protection, but it might also mean that the shape of a product is worthy of trademark protection in and of itself.
The fashion industry is currently fighting two battles on the intellectual property front. The first is against counterfeiters exploiting trademarks and logos. The second, more complicated battle is against those not-so-imaginative designers from within the industry who are simply aping the designs of their peers. This second fight is the one that is most harmful to creativity, investment and reputation. The main weapon against knockoffs is design right protection, but this is not an option if the design isn't new. So, timeless products without obvious trademarks but which are instantly recognisable — think the classic Hermès Kelly bag — are in a sort-of legal limbo.
In the EU, it is in principle possible to protect a (three-dimensional) shape as a trademark. In practice, however, it has proven extremely difficult to convince courts that a shape has a sufficiently "distinctive character" to be registered. For many years, European courts have been of the opinion that consumers are not in the habit of making assumptions about the origin of products based on their shape. They argue that consumers need a sign or word element to make that connection.
Last week, an EU court restated this long-standing position in a case concerning the shape of the Bounty chocolate bar. The court's view is basically that the shape of a product must be more than a variant of a common shape of the type of product in question. Only then can it fulfill the function of a trademark indicating origin. Assessing whether that is the case should be done from the point of view of "the relevant public", described as the "average consumers of the products or services in question, who are reasonably well informed and reasonably observant and circumspect."
Still, a closer look at this general reasoning makes one wonder if we haven't actually arrived at a point where at least some consumer groups make the connection between a shape and a product's origin. While the shape of the Bounty bar might not be sufficiently distinctive for a trademark, the case of luxury products is fundamentally different. These are sophisticated products whose design is born of an intellectual process, tells a message and (if all goes well) transcends generations. What's more, the very essence of luxury products arguably creates a consumer group that is well above average when it comes to being informed, observant and circumspect about details, other brands and look-alikes.
If luxury consumers are willing to pay for quality in design and shape, shouldn't it be possible to protect the required and underlying investment and creativity?
Hanne Melin is a competition and IP lawyer based in Brussels