The potential scope of trade mark protection for a brand owner is wide. Trade marks may be registered in relation to words, logos, colours, sounds or smells and even shapes. However, shapes are notoriously hard to protect as trade marks as has recently been demonstrated in Europe.
In November 2016, the European Court of Justice (ECJ) ruled that even universally known shapes aren't always entitled to protection, when it held the Rubik's Cube should no longer be registered as a shape mark. The ECJ referred to Council Regulation 40/94, which prevents registration of a shape mark if a mark consists exclusively of the shape necessary to perform a technical function.
In the Rubik's Cube case, the ECJ considered that, while there was nothing functional in the 3D cube shape as it appeared, non-visible elements of the shape were relevant. In particular, the shape enabled the rotating capability of the puzzle, making it functional in nature and not sufficiently distinctive in itself.
This is not the first time that registration of a shape mark has been challenged on the basis of technical functionality. Lego faced a similar issue in 2010 when the ECJ refused protection of the classic Lego brick as a shape mark, as the brick shape merely performed a technical function.
In the UK, Cadbury has so far managed to block the registration of Nestle's four-fingered Kit Kat as a shape mark on various grounds, including that the shape is non-distinctive and has a technical function (the presence of grooves enables a person to break off pieces of the bar).
The New Zealand Trade Marks Act does not contain restrictions on shape marks analogous to those in Regulation 40/94. However, the extent to which a shape is related to the functionality of a product will be relevant to the question of distinctiveness.
The difficulty in registering shape marks is reasonably fair in all the circumstances. Having the rights to a shape could give a company sweeping powers to block the entry of competing products into the market.
Product owners will also be entitled to trade mark, copyright or patent protection for various elements of their products and can always rely on other remedies such as fair trading and passing off.
Still, the Rubik's Cube case serves as an important reminder that even longstanding trade marks may be liable to challenge, and companies may not have unlimited rights in respect of their products, no matter how well-known they are.
The ECJ judges ruled: "In examining whether registration ought to be refused on the ground that shape involved a technical solution, EUIPO and the General Court should also have taken into account non-visible functional elements represented by that shape, such as its rotating capability."