This resulted in applications being filed with several different variations of the name and at a multitude of addresses.The result was that it was difficult to have a complete view of the trade mark portfolio and gaps in protection had appeared. Vintage also knew it had a valuable product that had gained goodwill — and it was eager to protect this.
Vintage had been producing a cheddar in the shape of a heart, wrapped in burgundy wax. It believed this combination was readily identifiable as its product and approached us for advice on how best to protect the unusually shaped cheese and its investment.
Shape marks are notoriously difficult to protect, unless they have some additional wording on them. The problem is, once you add wording or a logo, the protection for the shape is reduced at best, and possibly lost completely.
An application for an unconventional three-dimensional trade mark application was filed for the heart shape of the cheese in burgundy wax. Vintage provided the specific Pantone number for the burgundy colour that was specially produced by its cheese packaging company.
We prepared to respond to the expected objection from the UK IPO by putting together evidence of the length and extent of use made of the shape by Vintage. Crucially, the majority of the use displayed was without any additional wording or other material. As such, we were able to show that the shape and colour combination was functioning to identify the client’s products, and no one else’s.
On its own, the witness statement was not sufficient, and we were asked to present our case to a hearing officer to explain why the application should be accepted.
Following high-profile cases where trade mark protection was refused for seemingly well-known shapes (KitKat, Rubix cube, Lego figures), this case presented a challenge. Specifically, the hearing officer wanted to know why protection should be granted when case law from the Court of Appeal in Bongrain SA's Trade Mark was potentially against us.
However, we were able to persuade the hearing officer that Vintage’s application could be distinguished from the Bongrain trade mark, as our client’s application was not for the goods themselves, but rather the packaging. This packaging was immediately visible in the client’s advertising and promotion of the goods, as well as to the consumer at the point of sale. On this basis, the hearing officer was happy to accept the application, which proceeded to advertisement and registration with no further obstacles.
With a combination of submissions and verbal pleadings, this application was able to buck the trend. Our knowledge of what can be accepted by the UK IPO, and experience as to what evidence and arguments might need to be submitted to obtain protection for an unusual trade mark, were used here to great effect.