I would like to comment on a topic which has had unresolved issues for several decades. I am referring to the prospect of granting three-dimensional trademarks, or rather, the possibility of granting trademarks on the shape of a product or its appearance without any other addition (for example in bottles, granting the shape of the said bottle naked, without any label or additional item, as a trademark).

The forms for the protection of trademarks have traditionally been denominative or figurative elements or combinations of both (known as mixed trademarks). 

However, over time and with the evolution of advertising strategies, novel and less conventional forms of protecting trademarks have been developed.

These include the possibility of protecting scents and sounds as trademarks but also product shapes and their appearance. In this article I will deal with this latter group although many of my comments on three-dimensional trademarks apply just as well to those involving scent and sound.

Two previous matters should be borne in mind regarding this subject: the first is that the definition of a trademark is as a distinctive sign of the commercial origin, so on perceiving this sign (denominative, figurative, smell, sound or three-dimensional object) we must be capable of identifying it with its owner.

The second matter is that based on the principle of territoriality which governs trademarks; every country regulates the protection of three-dimensional trademarks in its own way.

This even means that current legislation of some countries does not allow the registration of three-dimensional trademarks. This article focuses on the view of the European Union with regard to this kind of trademark. 

In light of this, what is the problem posed by three-dimensional trademarks? Well, nothing more nor less than there is in granting any other type of trademark.

The right granted with the concession of the trademark means exclusivity for that brand and therefore, a competitive advantage for the company which owns the same, where it can exclusively use that three-dimensional trademark and exclude third parties from the use of identical or similar trademarks to its own. In other words, it can take legal action against third parties for infringing upon their trademark.

The matter is not at all trivial. If a company can exclude its competition from using the shape of a product or the form of its appearance because it has been granted a trademark of this type, situations can arise where the right is abused.

This is what has motivated Trademark Offices (such as the OHIM or the SPTO) and the Courts to be very cautious in granting these three-dimensional trademarks.

It is not easy to obtain a three-dimensional trademark particularly when the shape of the product or its appearance is not substantially different from the usual form of this type of products.

This is where the problem lies: the Trademark Offices are obliged to require sufficient evidence that the three-dimensional trademark that is seeking the protection meets the definition of a trademark.

Thus, the applicant is urged to demonstrate that the consumer identifies the trademark with a commercial origin, in this case, with the applicant.

Although there are very clear cases of trademarks of this kind in which the consumer identifies the commercial origin of the product by its massive use over the years (cases such as the Coca-Cola bottle), the majority of them are less clear cut.

Here the work involved in proving that the trademark has become sufficiently distinct as to identify its commercial origin is crucial.

There are numerous ways to prove this, with one of the most accepted being through market research.

Therefore, the issue with granting three-dimensional trademarks is one of finding that difficult balance between awarding an exclusive right to the owners of these trademarks and trying to avoid any abuse which may arise from the exercise of this right by the owners themselves.

In the end, and as almost always happens, the solution is to examine cases on an individual basis.