Do you like scary movies (with protected IP)?
The so-called Ghostface mask was created almost 3 decades ago and became iconic because of its use in the 1996 film “Scream”. To this day the design of the mask is protected through IP rights. This is possible because the shape of the mask is a registered trademark (EUTM no. 015186877).
Just like words and logos, the shape of a product in itself can have sufficient “distinctive character”, i.e. to distinguish it from products from other companies. However, it is more difficult to register as a trademark because the consumer is more used to judging commercial origin based on names and logos. In practice this means that the shape must divert significantly from the norm and customs in the sector to be suitable for trademark registration.
If the shape is not very different from what is commonly used in a sector it is still possible to obtain trademark registration if the distinctive character has been acquired through (extensive and long) use (as long as there are no other grounds for refusal, such as technical function of the shape).
This was the case for the Ghostface mask. The EU Intellectual Property Office considered that the shape of the mask was not sufficiently different from other ones on the market, but did accept that in the EU it had acquired distinctive character. The success of the “Scream” films played an important part in this decision.
Another option to get a shape mark registered is to add other distinctive elements, such as a logo, label or name. However, under these circumstances competitors have more freedom to use a similar shape if words, logos and labels are different.
Obtaining trademark registration for the shape of a product (without additional elements) can be complicated, but offers a wider scope of protection than other IP rights. Design registration is easier, faster and has no examination procedure as to “distinctiveness”, but is limited to a maximum of 25 years, after which it becomes free to use. A registered trademark can be renewed every 10 years indefinitely.
Also, once a product has been disclosed or put on the market the owner has one year to seek design registration in the EU to avoid risk of invalidity proceedings. This novelty requirement is not applicable to trademark protection. Hence why the Ghostface mask was registered as a trademark more than 2 decades after its creation.
However, design protection might be the only possibility for some product shapes. EU law excludes trademark registration for signs which consist exclusively of a shape that gives substantial value to the good. This value is not only economical, but also in terms of “attractiveness”, i.e. if it is likely that the product will be purchased primarily because of the particular shape. This can be the case for products with a high aesthetical appearance, such as “designer” loudspeakers or chairs. Under these circumstances longstanding and widespread use cannot be invoked to prove acquired distinctiveness: trademark protection remains excluded even if the shape attained a certain level of recognition.
For recommendations regarding design or trademark protection (or combination of both) don’t hesitate to contact us!