Shape Marks - The Current Position for IP Lawyers

Introduction

This webinar will explore the UKIPO's apparent shift in practice concerning the examination of shape marks.

Historically, the standard test for determining the distinctiveness of a shape mark was whether it significantly departed from the norms and customs of the relevant sector (Henkel v OHIM).

However, in the relatively recent UKIPO case Husqvarna, the Appointed Person questioned whether this test is sufficient or merely necessary, suggesting that a shape may not automatically be distinctive solely because it significantly deviates from the norm.

Contrary to past trends, it is now exceedingly challenging for brand owners to register pure shape marks (without verbal elements) with the UKIPO, regardless of their visual distinctiveness.

Recent UKIPO decisions, which rely on the Husqvarna case, often imply that ‘something else’ is required, though what this specifically entails remains unclear.

While the position on shape marks is not yet fully clear and further guidance from UK courts would be welcome, practitioners and brand owners should keep the UKIPO’s recent practice in mind when devising their brand protection strategies.

What You Will Learn

This webinar will cover the following:

• An overview of the applicable case law relating to shape marks in the UK pre-Brexit and post-Brexit respectively, highlighting the apparent departure from EU case law
• The impact of the UKIPO's recent change in practice on the examination of shape marks
• Strategies for efficiently securing protection for shape marks and enforcement tactics

This webinar was recorded on 2nd September 2024

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