UCL Faculty of Laws


UCL Laws Institute of Brand and Innovation Law contemplates 'The Shape of Things to Come'

22 February 2018


UCL Laws Institute of Brand and Innovation Law called upon a distinguished panel of experts to predict the trajectory of design and trade mark protection of product shapes in light of recent case law and legislative developments on 14 February 2018.

Chaired by The Hon. Sir Richard Arnold, the panel consisted of Professor David Musker (QMUL), David Stone (Allen & Overy LLP), Professor Martin Senftleben (Vrije Universiteit, Amsterdam) and Thorsten Gailing (Nestle UK).

Once perceived as the ‘Cinderella’ of IP rights, design law has now caught policy makers’ attention. Existing protection regimes, including those within the EU, are being scrutinised for their fitness for purpose.

The panel reviewed the key recommendations included in the European Commission’s Legal review on industrial design protection in Europe, identifying the continued disparity in relation to national levels of design protection for spare parts, but reporting on increasing convergence in other areas. The lessons learnt from the Supreme Court ruling in PMS v. Magmatic were also explored and the positive outcomes for design-holders before IPEC were noted.   

In the early years of EU-harmonised trade mark law, trade mark protection seemed to provide a useful supplement to design registration. After all, the Trade Mark Directive specifically includes the shape of goods as a class of signs eligible for registration. While recent CJEU jurisprudence has left many struggling to identify which types of product shapes will be registerable, the panel considered the ‘escape routes’ which still remained following Hauck v Stokke.

The case, concerning the TRIPP-TRAPP chair, underlines the need to balance enhanced market transparency (which trade mark protection promotes) against preservation of the public domain of cultural expressions and technical knowledge.

The best hope for those product shapes which do survive the functionality exclusion is to show distinctiveness acquired by use. Few disagreed that more judicial guidance is needed to explain how this could be demonstrated, as a practical matter.

Speaking after the event, Dr Ilanah Fhima, co-director of UCL Law’s Institute of Brand and Innovation Law, characterised the debate as ‘good spirited, yet candid.’ She added that the evening’s discussions ‘not only acknowledged the very real problems which design-led businesses and brand owners face when protecting the shape of their products, but made some contribution towards providing some possible solutions.’

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