There were numerous and wide ranging developments in intellectual property law in 2022, This includes the evolution and commercialisation of the Metaverse and NFT’s attracting significant media attention as a breakthrough development. In this article, we focus on three key case law developments:
- The decision by the EUIPO Fifth Board of Appeal to permit the well-known vodka brand, Absolut, to successfully register its 3D vodka bottle shape as a trade mark
- The decision by the EUIPO to refuse to register the famous and iconic saddleshaped Dior handbag as a trade mark for “bags” “handbags” and “purses”, and
- The decision by the Intellectual Property Enterprise Court in the UK holding that the well-known fictional character, Del Boy Trotter from the television series ‘Only Fools and Horses’ is protected by copyright
The first two cases, which involved the famous brand names Absolut and Dior, illustrate the inherent difficulties with registering unconventional shapes as trade marks, particularly in the EU. Whilst this is an ever developing area of trade mark law, brand owners will now need to be aware that only shapes which depart significantly from the norm and customs of the sector will be regarded as having the required level of distinctiveness. The third development will equally have a significant impact on the protection of literary characters in the future.
Distinctive & Distilled
The worldwide well-known Vodka brand, Absolut, successfully obtained a trade mark registration for the 3D shape of its vodka bottle. Given historic difficulties with obtaining trade mark registrations for 3D marks and unconventional shape marks which serve a technical function, this decision will serve as a reminder to brand owners that where the shape of their products or packaging departs from the norm, those shapes may be protectable as trade marks. According to the EUIPO Fifth Board of Appeal decision, where the shape at issue such as a distinctive vodka bottle, meets the below 3 criteria, it will be capable of being registered as an EU trade mark:
- More than one “eye-catching and striking” colour
- Is not so complex that it will be remembered by consumers, and
- Where it differs sufficiently from those already available in the market
Read the full article: Distinctive & Distilled - Absolut Vodka Secures Trade Mark Protection for Bottle Shape
Dior Loses Shape Mark Appeal
It was decided by the EUIPO that the famous and iconic saddle shaped Dior handbag is not sufficiently distinctive to be registered as a trade mark for “bags” “handbags” and “purses.” This was despite evidence furnished by Dior that the handbag had been heavily promoted over a number of years by celebrities and television personalities including Jennifer Lawrence, Beyoncé, and the well known fictional television character Carrie Bradshaw from the tv show Sex and the City.
In contrast to the decision reached by the EUIPO in the Absolut Vodka bottle case, in this case, the EUIPO found against Dior and commented that only shapes that depart significantly from the norm and customs of the sector will be regarded as having the required level of distinctiveness.
Although Dior may yet decide to appeal this decision to the General Court of the EU, the decision serves a reminder of the difficulties faced by brand owners in obtaining trade mark registrations for unconventional shape marks.
Read the full article: Dior Loses Shape Mark Appeal - Handbags, gladrags and trade marks
The Intellectual Property Enterprise Court in the UK recently found that the well-known fictional character of Del Boy Trotter from ‘Only Fools and Horses’ is protected by copyright. This decision now allows the owners of that copyright to prevent others from making use of the character. Significantly, this is the first time a fictional character has been protected through copyright and will have a significant impact on the protection of literary characters and works going forward.
The defendants in this case ran an interactive dining show called the “Only Fools The (Cushty) Dining Experience”. Throughout the meal, the actors would play different characters from the ‘Only Fools and Horses’ television series. While the dining experience did not use scripts from the TV series, the actor playing Del Boy did portray some very iconic features of his character. This case is an interesting one as it is the first time an English court has provided for protection of a fictional character. As the decision applied EU law, it will no doubt be of relevance to Irish courts in considering similar cases in the future.
Read the full article: Au Contraire! Del Boy Character Protected by Copyright
The two EUIPO cases discussed above will be of relevance to all companies which have distinct product offerings including those operating in the food and beverage and fashion sectors. In particular, the cases provide much needed clarity to brand owners about how they can bolster their IP protections where the shape of their products or packaging departs from the norm.
The case involving Dior, in particular, is unlikely to have yet reached a conclusion but both cases demonstrate the interplay between trade mark and design protection which are both invaluable IP rights to brand owners. In the copyright space, the landmark UK Court decision to protect the ‘Del Boy’ fictional character will undoubtedly have a profound impact on the protection of literary characters and works in other territories going forward. In the immediate term, we expect the Irish and EU Courts will follow the approach of the Intellectual Property Enterprise Court in the UK.
For expert advice on successful protecting your organisation's IP rights in 2023, contact a member of our Intellectual Property team.
The content of this article is provided for information purposes only and does not constitute legal or other advice.