Trademark registration is crucial when protecting a business’ brands, reputation, and goodwill. In order to ensure that a trademark protects against all types of trademark infringements, it is important to understand the different paths that can be pursued when submitting a trademark application. This article will run through how to do so, specifically when it comes to 3D trademark registration, in Israel and internationally. As we will demonstrate below, 3D trademarks have unique rules that must be understood before applying for their registration.
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Why Do 3D Trademarks Raise So Much Legal Uncertainty?
Trademark law can be characterized by being mainly territorial. That is, the law which applies for trademark registration and protection varies from one country to another. For that reason, registration in one country generally won’t grant trademark protection elsewhere. Therefore, protecting your trademarks in Israel requires legal expertise and knowledge of the specific laws, regulation and case law applicable within the territory.
It is even more relevant when it comes to 3D trademark registration, as the Israeli Trademark Ordinance (the main legislative source of Israeli trademark law) does not refer to 3D trademarks in particular. As a result, the rules and criteria for 3D trademark registration in Israel were set by the Israeli court and the Israel Patent Office.
Up to this date, there is still a lot of uncertainty with regards to the topic in Israel, as well as international registration of 3D trademarks. Below we will elaborate on the topic and explain the particular difficulties related to 3D trademark registration. We will begin with presenting the international status and legal features and then focus on the situation in Israel.
International Trademark Legal Systems
While there is no international trademark law per se, there are some legal features that apply in multiple countries. Those features help to create some sort of standardization of trademark law internationally. Yet, those features apply for 3D trademarks registration only partially.
The first feature in this respect is the classification system for goods and services relating to the application of trademarks, set by the Nice agreement. When applying for a new trademark in one of the 90 member countries and territories in the Nice Classification System, the applicant must choose the relevant class or classes under which the mark should be registered.
For example, if the product is a lighting control system, it would usually be registered under class 11. The reason is that class 11 includes lightning, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply, etc. Thus, a new brand of a lighting control system would be usually applied for under that class.
In general, if two products have different areas of interest with different class headings, they might be able to have the same name. A common example of this is Dove chocolate and Dove soap. These two distinct brands are able to operate in parallel, even though they have the same name, due to a lack of overlap in the industry.
The Madrid protocol is another important feature regarding international trademark registration. It is the main international system allowing for the registration of trademarks across different countries. It was established in 1989 and today includes 90 member countries.
The Madrid system became a central system of trademark registration across different countries and regions. In accordance with its policies, and with Israel being a member since 2010, the system made it easier to file, register trademarks internationally. You can read more about the topic here.
3D Trademark Registration Around the World
In various countries, it can generally be possible to use a 2D model to protect a 3D shape with trademark rights. Yet, each country or territory has different rules regarding 3D trademark registration. In China, for instance, it is very difficult to register a 3D trademark, compared to trademarks that consist of words or devices/graphics. The Chinese trademark law in this regard is mainly based on case law, and so far there was no clear precedent. The main obstacle is to prove that the mark is distinctive and that the 3D shape is not merely functional.
Similarly in the EU, the difficulty to prove distinctiveness plays a role in the decision whether to register a 3D mark as a trademark or not. In 2017, the EU Intellectual Property Office (EUIPO) has published guidelines for examination of trademark applications, in order to conclude whether a mark can be registered.
The guidelines set 3 categories of types of 3D shapes: packaging, the shape of the goods and shapes that are non-related to the goods directly. Each category is being treated differently during the examination process of applications. While non-related shapes would usually be recognized as distinctive, packaging and shapes of goods would be examined under a list of criteria in order to conclude whether they are distinctive and qualified for registration.
Israeli 3D Trademark Law
Understanding the nuances of Israeli law regarding 3D trademarks can be complex, and the bureaucracy of the Israeli patent office can be confusing at times. There are 3 terms that must be met in order for the Israel Patent Office to consider granting a 3D trademark, and they are somewhat restrictive. The terms are: (1) the 3D design serves as an actual trademark; (2) the design is not mainly functional or aesthetic (which are covered through other IP registration methods); (3) it has gotten recognition for its use (i.e., acquiring distinctiveness).
These rules and regulations come from guidelines that were released by the Israel Patent Office in 2015 and largely reflect a shift made following the 2008 landmark case August Storck KG vs. Alfa Intuit Food Products LTD. This case dealt with 2 competing candy companies, one who had a trademark on a 3D product.
The Israeli Supreme Court found that a 3D shape can only be registered as a trademark on the basis of an acquired distinctive character rather than something inherent. In other words, the object must have gained value due to added attention or understanding (e.g., a logo that gains value for a brand) in contrast to something with value in iteslf (e.g., an invention with its own worth). More so, trademarks cannot be acquired for a 3D product with a functional or aesthetic role, even if they have value due to the attention they gain.
Alternative IP Rights for 3D Models
As previously mentioned, if the 3D product in mind provides some sort of function, for example, a new type of computer hardware, it generally won’t be registered as a trademark on the concept. Instead, the priority will be to obtain a design protection, which could last for up to 25 years. You can read more about the new Israeli Design Law and the legal features it contains here.
A key concept to note is that while trademarks can be repeatedly renewed every 10 years, designs can only provide protection for up to 25 years, as mentioned above. Thus, for the brand, it is preferable to receive a trademark if possible. With this said, only if the company’s 3D object follows certain rules, outlined above, will a trademark for the object be considered.
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In this article we discussed trademark law in Israel and abroad, focusing on the legal aspects of 3D trademark registration. As demonstrated in length, 3D trademarks have unique features and rules applying to them, and that requires specific knowledge and expertise in order to protect them properly. If you have more questions or inquiries about the topic, our trademark experts will be happy to assist you. The law firm of Decker, Pex, Leviis well experienced with representing clients in various IP matters, specifically trademark and design matters, in Israel and abroad.