It is quite obvious why car manufacturers would attempt to register their car shapes as trade marks.  Generally, the shape and design of a car is protected as an aesthetic design or by way of copyright.  However, these rights are only enforceable for a limited period.  Thereafter it's fair game.  Trade mark registrations can, in theory, be renewed in perpetuity, thereby ensuring perpetual enforcement.

In the case of Jaguar Land Rover Limited v Ineos Industries Holdings Limited [2020] EWHC 2130 (Ch), Ineos opposed Jaguar Land Rover’s application in the United Kingdom to protect the shape of its iconic Defender model in respect of various goods, including motor vehicles and playthings.  Ineos is set to release its own four-by-four vehicle in 2022, named the Grenadier.  The Grenadier shares various visual similarities with Jaguar Land Rover’s Defender.

In assessing Jaguar Land Rover’s applications for its Defender shape trade marks, the hearing officer concluded that the marks were neither inherently distinctive, nor had they acquired distinctiveness through prior use.  Jaguar Land Rover appealed the decision and presented survey evidence to support their argument that the trade marks had acquired distinctiveness through prior use.  These arguments were rejected by the UK High Court and the decision by the hearing officer was upheld.

Notwithstanding its well-known status as a British motoring icon and its 67-year production term, Jaguar Land Rover was unable to show that the shape of its Land Rover Defender fulfilled the requirements to be legally distinctive.  This case brings into question the weight courts give to survey evidence to support a claim of acquired distinctiveness. 

Notwithstanding this outcome, Jaguar Land Rover has now proceeded to file further trade mark applications in the United Kingdom for its Defender shape trade mark.  In this instance they have identified and claimed, what they would argue, are distinctive features of the Defender (i.e. its pair of elongated rounded edge windows at the top of the canopy, as well as its two rectangular rounded edge windows located either side of the rear window).  It is worth noting that these features are present on the Ineos Grenadier and it would seem the tussle is far from over.

In another dispute and during June 2019, Ferrari became aware that Ares Design was planning to produce replicas of its world famous 250 GTO cars.   Ferrari instituted trade mark infringement proceedings, based on its trade mark registrations for the 250 GTO shape, in the Court of Bologna and was successful on appeal.

Ares was not done and instituted cancellation proceedings against Ferrari’s EU trade mark registration for its 250 GTO shape trade mark, arguing that Ferrari has not made genuine use of 250 GTO shape trade mark for a continuous period of five years, in particular, in relation to motor vehicles.

In its decision, the EUIPO Cancellation Division found that Ferrari was only able to show genuine use of its 250 GTO shape mark in relation to toy models of its iconic motor vehicle and, consequently, revoked its registration for the 250 GTO shape trade mark in respect of motor vehicles.

One could understand why Ferrari would do everything in its power to retain these trade marks.  The most expensive car ever sold at auction was a 1962 Ferrari 250 GTO which sold for USD$48.4 million (approx. R800 million).

From a legal perspective, the criteria for assessing the registrability of a shape mark does not differ from any other category of trade marks.  As such, the mark for which registration is sought must be capable of distinguishing the goods of a person in respect of which registration is sought, from those of others, i.e. the mark must act as a badge of origin.

One could possibly understand why so many have failed to register their car shapes as trade marks, or have their registrations revoked.  In the case of UNILEVER PLC’s Trade Mark Application [2003] RPC 35 651 (ChD) 662, the learned judge submitted that it is not enough to prove that the public recognises the shape of a product as the product of a particular manufacturer.  It must be proved that consumers regard the shape alone as a badge of trade origin in the same sense that they would rely upon that shape alone as an indication of trade origin.  This can be quite a daunting task to prove.

Notwithstanding its rather dismal placement on the spectrum of inherent distinctiveness, the test for registrability of shape marks in South Africa is the same as that of any word mark.  A shape mark must simply be capable of distinguishing the product of the proprietor of the mark from those of other undertakings and thus fulfil its essential purpose of guaranteeing the origin of the product.  This is, however, easier said than done.

South African is no stranger to disputes relating to shape marks.  In the case of Beecham Group plc v Triomed (Pty) Ltd [2002] 4 All SA 193 (SCA) which related to the rectification of a trade mark registration for the shape of a pharmaceutical tablet, the court stated that customers are not usually accustomed to perceive shapes of goods as a badge of origin.  They are generally seen as purely decorative.  The court further stated that just because the pharmaceutical tablet shape is recognisable does not mean it is being used for the purposes of distinguishing the goods from those of others.

In the case of Societe des Produits Nestlé SA v International Foodstuffs (100/14) [2014] ZASCA 187, Nestlé alleged that International Foodstuffs (Iffco) was infringing its KIT-KAT shape and word trade marks.  Iffco launched a counterclaim for expungement of Nestlé’s KIT-KAT shape mark, alleging the wafer shape was merely functional (you know, to “…have a BREAK…”).  The court dismissed Iffco’s counterclaim and found that the Iffco wafer shape was infringing Nestlé’s shape trade mark.  It therefore seems it's not all bad news.  One can successfully register a shape trade mark and enforce it.  However, it may be worth noting that the court possibly erred as it had not correctly considered the difference between "recognising" a shape, and "relying" on a shape as a badge of origin.

Sufficient arguments should be formulated to show that the shape is either inherently distinctive, or has become distinctive through prior use, and that the shape does not merely serve to distinguish the article from other shapes, but serves to guarantee the origin of the goods.  The mere fact that a shape may be argued as being distinctive in the conventional sense, does not mean it is distinctive in a trade mark sense.

It is therefore advisable to seek the expertise of a trade mark practitioner to assist in this regard, who can not only advise as to the registrability of the proposed mark, but also ensure the best possible prospects of successfully registering the mark as a trade mark.