Three-dimensional trademark register: what it is and what to bear in mind for your product

The story goes that, during a trip to Paris, Vicente Bosch, one of the founders of the Anís del Mono factory, went to the Place Vendôme to buy a gift for his wife. There he came across a perfume whose diamond-cut bottle caught his attention. In 1902, after requesting the rights to the container from the perfumer, he created what is perhaps the most famous Spanish example of a three-dimensional trademark register, if not the first. Since then, the iconic bottle has been the hallmark of the no less legendary and world-famous liqueur made in Badalona, Catalonia.

To begin with, let’s define what is meant by a three-dimensional trademark. Like the bottle of Anís del Mono or Coca-Cola, it is an external element, usually the container or packaging of a product, which allows it to be identified and differentiated from others. In other words, this element is the distinctive trademark, apart from the logo, by which the product of a particular brand will be recognised in commercial transactions. But it will also allow for its identification by the consumer through sight and touch.

Now, let’s break down this concept: in principle, we are talking about a three-dimensional trademark that the consumer can identify with the naked eye thanks to its corporeal appearance. Then, as a check, a tactile examination will suffice to recognise the texture included in its shape or packaging.

Therefore, in order to register a three-dimensional trademark, the shape or presentation of the product must occupy all three dimensions in space: height, width and depth.

Having said that, we must evaluate the implicit elements in three-dimensional trademarks before registering one as such. In the first place, a three-dimensional trademark differs from an industrial design in that the latter is novel, in contrast to innovations referring to the external characteristics of the product and which may form a product totally or partially.

Consequently, although registering an industrial design protects the external and three-dimensional appearance of the product, the requirement of originality and uniqueness is essential. If both characteristics cannot be proven, it is not possible to register the design.

On the other hand, the registration of a three-dimensional trademark is applicable to the aesthetic design of a product, as long as it complies with the requirements set out in Article 4 of the Trademark Law, regardless of its novelty and uniqueness.

On the other hand, it is possible to register the same design as an industrial design and as a three-dimensional trademark if it complies with the requirements of both laws in force.

However, registering a trademark only protects the identification of such an aesthetic appearance as a trademark. In this way, the consumer can associate the design of the product with the company of origin. In contrast, industrial design only protects the aesthetic qualities of an object or a product.

In terms of ownership, three-dimensional trademarks are subject to unlimited renewal of the trademark every 10 years. The owner of an industrial design, on the other hand, will only have rights to it for a maximum of 25 years.

It is also pertinent to compare mixed and three-dimensional trademarks. Registering the former protects a flat, two-dimensional graphic element. Meanwhile, registering a three-dimensional trademark covers the different planes that the physical object files in reality (height, width and depth) and the textures that allow it to be recognised by touch.

Based on the above, we can list several benefits derived from registering ‘three-dimensional’ trademarks:

  • In principle, it prevents third parties from making use of the aesthetic appearance of packaging or packages whose popularity constitutes a clear competitive advantage in the market.
  • It makes it easier for consumers and users to recognise and identify the owner’s products among their competitors.
  • It also makes products more competitive in the market. Very often, the aesthetic form of the products and the design of the packaging attract the consumer’s attention. Similarly, the customer wants to buy products that are different from what others buy, even if they have to pay more for them.
  • As we said, it is possible to renew the registration of a three-dimensional trademark every 10 years. This grants an exclusive and unlimited right over the filing of a product.

When registering the aesthetic appearance of a product, we can include various elements:

  • Figurative elements. The external design or packaging of a product is often complemented by other word and/or figurative trademarks. It should be noted that it is optional for the owner to include the latter in the register of three-dimensional trademarks. In this case, it is essential that the registration of both the logo and the company name are independent of the aesthetic appearance of the product. In other words, it is necessary to have separate registers for each.
  • Textures and shapes. As with the Anís del Mono bottle, containers can be filed as shapes and elements that can be felt. Either as simple decoration or to make them easier to grip.
  • Colours. Of course, the colours contained in three-dimensional trademarks must be listed and described in the register. There are even cases in which the colour of the trademark is so unique and personalised that it should be registered as a colour trademark or pattern. This registration must be individualised in order to strengthen the protection of intellectual property rights. A well-known example is the yellow ochre that distinguishes the Caterpillar machinery trademark. This colour is known as ‘Caterpillar yellow’.

Specifically, the procedures for registering three-dimensional trademarks are identical to those applied to conventional trademarks. The requirements are the same as those set out in Titles I and II of the aforementioned Trademark Law (Law 17/2001, of 7 December).

Of course, when it comes to the type of trademark in question, we must consider the characteristics already mentioned. Precisely, one of the requirements for obtaining protection for these trademarks is that they must be able to distinguish their manufacturer from third-party operators in the market. In our case, this is somewhat more complicated.

When we talk about the aesthetic form of a product that has just been launched on the market, it is often the case that the trademark alone does not manage to link the design of the packaging with its manufacturer. It is often for this reason that these physical trademarks are first registered as industrial designs. In this way, they have protection against the competition when they come onto the market.

Sometimes, thanks to the marketing strategy and the success of the product, the packaging or design ends up becoming a reference or icon. In this way, the aesthetic form is capable of establishing a link with its manufacturer.

Once this association has been demonstrated, it is logical to proceed with the registration of a three-dimensional trademark of the trademark.

A century of experience in the registration and protection of trademarks and patents at a national and international level sets us apart. At Isern we have a team of 150 professionals specialising in all aspects of intellectual property. With our innovative strategies, based on the Legaltech model, your assets will have solid and effective protection.

Do you need to register three-dimensional trademarks? Contact us and visit us at any of our 12 offices in Spain, where we will advise you and take care of all the paperwork.

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