While on vacation in Hawaii recently an ad in an in-flight magazine caught my eye. In a great example of a mark truly functioning as a badge of origin the ad told me I would know from the shape of the product who it was from. Not being a local, I didn’t immediately, but a very quick search told me that only the Honolulu Cookie Company sells pineapple-shaped biscuits - see www.honolulucookie.com. I am sure plenty of people, especially Americans, already knew that and just the sight of a pineapple-shaped biscuit would bring the Honolulu Cookie Company to mind. I have always been fascinated by 3D marks; they have real trade mark value (as this example shows) but regularly get knocked back by trade mark examiners or attacked by competitors. Recent high-profile examples include the new-style Coca-Cola bottle and Nestle’s application to register the shape of its Kit Kat. An example closer to home is Nestlé’s application to register the shape of coffee pods for the Nespresso machine (which is under opposition). To work, just like any trade mark, the shape can’t be functional or bring to mind a product generally. Seeing the shape, without any other branding, must be capable of bringing to mind the trade mark owner. One successful example is Modelez’s triangular prism for chocolate packaging; instantly recognisable as being Toblerone! Creating a product or packaging shape that is distinctive and capable of being registered as a trade mark is easier said than done. Branding is usually an all-out visual assault; the shape being just one small part. That is perhaps why there are just 270 registered 3D marks in New Zealand.
Chocolatiers are free to make rival versions of the famous four-fingered Kit Kat, after the high court threw out a bid by Nestlé, the maker of the iconic bar, to trademark its shape. In a blow to the Swiss food giant, a judge ruled in favour of its rival, Cadbury, and agreed that the shape of the four-fingered bar was not distinctive enough to merit a trademark