Shape trade mark on the nose

A refusal by IPONZ to register the shape trade mark shown below has been upheld by the Assistant Commissioner in Noms De Code Societe Par Actions Simpliefiee’s Appln [2009] NZIPOTM 16.

The application was filed in class 3 for goods including “perfumes” and was accompanied by the explanation “the mark consists of a three-dimensional shape of a bottle, as shown in the representation attached to the application”.

IPONZ proposed to reject the application on the basis of lack of distinctive character (section 18(1)(b)).  The applicant did not file any evidence use and it was left to the Assistant Commissioner to decide whether the mark had sufficient inherent distinctiveness.The applicant argued that consumers of perfume recognize the shapes of bottles as trade marks, and the applicant’s mark was distinctive by virtue of its combination of features, including an octagonal shaped bottle; with flat surfaces on the front and back; raised square studs in each corner (giving the bottle an industrial appearance); and a two level ziggurat cap.

The Assistant Commissioner concluded that the whole of the mark lacked the inherent distinctiveness required for prima facie registration, because:

  • It consists largely of a rectangular bottle, which other traders are likely to wish to use;
  • Other traders were also likely to wish to use features such as a similarly shaped cap or similar forms of decoration around their bottles; and
  • The scope of the application was broad; the application only provided two perspectives of the mark, it was not limited to colour, size or materials, all increasing the likelihood of other traders being caught by the proposed registration of the mark.

The Assistant Commissioner’s approach is in line with the current practice at IPONZ. It is notoriously difficult to register bottle shapes as trade marks without either evidence of use or a high degree of stylisation contained within the mark.  However, it would be interesting to know whether the outcome in this case would have been different had the explanation of the trade mark further limited the mark in terms of colour, size and material composition.