Q&A with Margaret Ryan: Shape Trade Marks and Distinctiveness

In the Shape Trade Marks in Focus session, Margaret Ryan explores one of the more challenging areas of trade mark law through a practical, real‑world lens. As shape marks become an increasingly important tool for brand differentiation, courts continue to apply close scrutiny to questions of distinctiveness, use and infringement, particularly where functional and branding elements overlap. In this Q&A, Margaret shares her insights on how these issues are approached in practice, the role of advertising in establishing trade mark use, and what practitioners should consider when advising on shape marks as long‑term brand assets.

1. Why do shape trade marks continue to present particular challenges when assessing inherent capacity to distinguish under section 41?

Shape trade marks, whether they be the shape of the goods or the shape of their container, can be difficult to register or to use as a trade mark because they inherently have a dual purpose – firstly as the goods or container themselves and secondly as a trade mark. For a shape to have any inherent capacity to distinguish under s 41, there must be something "extra" apart from the inherent form of the goods or container themselves. To establish use as a trade mark, the use needs to focus on the shape as a trade mark, rather than merely showing the shape of the goods or the container.

2. How do courts and registries approach the question of whether a shape is being used “as a trade mark”?

Courts and registries are looking for the something "extra" that distinguishes the goods or container from similar types of goods or containers. They also look at the advertising of the mark to see whether it focusses on the shape apart from other branding elements.

3. How can advertising and promotional material strengthen, or inadvertently weaken, claims of distinctiveness for shape trade marks?

Advertising that focusses on the shape and has minimal use of other brand elements, as was shown in the Moccona jar case, can make the case for use as a trade mark and show that the jar had acquired distinctiveness as a trade mark. But advertising that merely shows the goods or container without emphasising that they are a trade mark will typically not be considered to show use as a trade mark. This means that this advertising, even if extensive, does not help the case that the shape is a distinctive trade mark.

4. When assessing infringement under section 120, what makes deceptive similarity analysis especially complex for shape marks?

When comparing two trade marks, a resemblance between the two is always necessary, accounting for the imperfect recollect of the consumer. Similarity in what makes a shape memorable or distinctive is what is required. Features that are functional are not usually protected because that would allow a trade mark registration to be similar to registered design protection.

5. What practical advice would you give brand owners seeking to rely on shape trade marks as long-term brand assets?

Before filing an application for a shape trade mark, the advertising for the mark should be examined to see whether it has focussed on the shape as apart from other trade marks, such as the main brand. If this has not occurred, I recommend that the application be delayed until such marketing campaigns have been undertaken. Marketing needs to be creative to try to tell a story around the shape, making the shape the centre of attention in the ads. This will be the main use as a trade mark that the application will rely upon to establish capacity to distinguish.