What are the challenges of protecting 3D marks in product design?

INTRODUCTION

In the sphere of intellectual property, three-dimensional (3D) marks, the trademarks that protect a product's three-dimensional shape are essential for building brand recognition by consumers. The Coca-Cola bottle, the tapered edge of the iPhone, or the curved shapes of different smartphones can be an example of the use of these marks to differentiate between products in a crowded marketplace. Protecting 3D marks creates a unique set of challenges that differ from protecting a 2D trademark. While they can be registered and used like traditional 2D trademarks, 3D marks must also comply with various legal requirements and various laws regarding functionality, innovation, and the protection of consumers. This article addresses some of these hurdles that confront the designer, manufacturer, and lawyer and the speed of technological growth and international trade.

LEGAL RECOGNITION AND REGISTRATION DIFFICULTIES

In intellectual property, 3D marks that are the shapes of products help make brands and allow consumers to identify a brand. Everything from the Coca-Cola bottle shape to the curves of a smartphone is a mark that distinguishes a product in a crowded marketplace. Nonetheless, it is a challenge to protect them. Three-dimensional marks face a lot more challenges than normal two-dimensional marks since they have to clear a lot more hurdles. These hurdles consist of many things, including functional, conflict, and consumer protection hurdles. This post looks at some of the major challenges to 3D mark protection facing designers, manufacturers and lawyers in a fast-evolving technological and global trading environment

FUNCTIONALITY DOCTRINE AND AESTHETIC FUNCTIONALITY

The functional doctrine's explanation, as discussed above, provides another obstacle for trademark applicants. U.S. law prohibits trademarking functional attributes/qualities of a product in order to preserve competition and keep useful designs available for all. The decision of the Supreme Court in Qualitex Co. v. Jacobson Products Co. (1995) made it clear that if a color is non-functional, it can be trademarked; however, the same type of test applies to three-dimensional shapes. A shape that is necessary to achieve the purpose of a product may be considered functional and therefore not protected by trademark. An example includes an ergonomic feature on a tool that is used for handling/operation; if the shape enables its intended use, it will likely be determined functional (meaning it cannot be trademarked). This also applies to "Aesthetic Functionality," where a design element is viewed as making the product more marketable and is deemed to provide no utilitarian advantage, thus denying protection. An example would be the shape of a luxury handbag that generates sales in the market; because the shape contributes to the sale of a luxury handbag, the shape may be viewed as having " Aesthetic Functionality" and is ineligible to be registered as a trademark. Therefore, designers must demonstrate that the shape does not provide any purpose other than indicating the source of the item; however, that determination is subjective and often results in litigation. In the EU, the Court of Justice has determined that a shape must not be determined by its technical function; however, to overcome the requirement to show that the shape is not determined by its technical function, applicants must provide considerable proof. This requirement deters most applicants from pursuing trademark registration.

PROOF OF DISTINCTIVENESS AND SECONDARY MEANING

3D marks are difficult to establish distinctiveness. The three-dimensional shape of a product is usually representational or suggestive of the probable manner of use, unlike arbitrary word or symbol marks. Therefore, in order to demonstrate that the shape qualifies as a 3D mark, the owner of the 3D mark must prove 'acquired distinctiveness' or secondary meaning. The owner must provide evidence to support the argument that the shape is a unique identifier of the brand for consumers. Unfortunately, the cost of obtaining this evidence (surveys, sales, marketing) can be significant, and the results can be inconclusive. This is especially true for newer product categories, such as new technology products, which take years to build recognition by consumers. During this time, a product's shape could easily be copied. This is illustrated in the numerous cases involving Apple and the shape of the iPhone. Even when Apple has ample resources to develop the necessary evidence for secondary meaning, it is often unable to establish secondary meaning due to the continued argument by competitors that the shape is generic.

ENFORCEMENT AND INFRINGEMENT ISSUES

Enforcement of 3D marks adds an added layer of complexity. The ease with which 3D products can be replicated using 3D printing and rapid prototyping has made it difficult for owners to protect and enforce their 3D marks. The use of online marketplaces and global supply chains makes it even more difficult for owners to implement enforcement. For example, while a trademark owner may obtain a cease and desist order after the fact and sometimes receive some monetary relief for any damage caused to the mark owner's business, in most situations, it is far too late to minimize the damage caused. Customs seizures have been successful in many cases but are limited to major seaports and only if the mark has been previously registered. In addition, jurisdictions with inconsistent enforcement of IP laws, such as China, make it very difficult to enforce and protect 3D marks. With the advent of AI-generated designs, the original author and ownership of a design may be unable to be established, making enforcement and infringement of 3D marks even more complicated.

INTERNATIONAL ADVANCEMENT AND FUTURE IMPLICATIONS

The international community is fragmented in what types of protection are available due to countries’ differences in their laws on intellectual property (IP). The United States gives greater importance to functionality than the European Union gives to technical outcomes. The Madrid Protocol was developed to help create an international process for registering marks in multiple countries; however, solely 3-D marks may not all be accepted in all countries, and each country will have their own processes for reviewing trademark applications and may have also set an arbitrary timeframe in which to accept an application. Many of the developing countries may not have the same level of intellectual property protection, and a developing country’s system for protecting intellectual property (generally referred to as IP) may permit copying of products freely. The purpose of the TRIPS Agreement was to establish minimum standards for intellectual property protection, yet the way to implement this agreement and meet those standards is very different. This allows infringement through loopholes. Multinational companies are attempting to deal with this patchwork of protection and making decisions to file design patents with their trademarks for broader protection for the design; however, the life of a design patent is shorter than that of a trademark (usually 15-20 years for design patents).

CONCLUSION

Many barriers exist in protecting 3D trademarks in product design from legal, practical, and global perspectives, requiring new thinking from designers and brands alike. The requirement to demonstrate distinctiveness while being subject to the challenges of functionality and enforcing trademarks in a digital environment requires greater clarity from international guidelines; it is critical that designers and brands protect their innovations through comprehensive evidence and monitoring. As technology advances, so do the expectations of intellectual property systems to maintain the balance between creativity, competition, and consumer interests with regard to the effective use of 3D trademarks as a means of brand protection.