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but also shapes of goods may perform a trade mark function.5 For example, English law, implementing a
European Community Directive, now provides that a trade mark may consist of "the shape of goods or their
packaging" and our 1993 Act, similarly, states that shapes and containers for goods may be trade marks.
Importantly, from a legal perspective these trade marks do not differ from any other kind of trade mark:
"the criteria for assessing the distinctive character of threedimensional shapeofproducts marks are no different
from those applicable to other categories of trade mark."6
However, from a practical point of view they stand on a different footing.
[8]
The problem they pose for their promoters is that according to the public perception containers and shapes
generally do not, in American parlance, serve as source identifiers.7 Containers are usually perceived to be
functional and, if not run of the mill, to be decorative and not badges of origin. Laddie J pointed out that
merely because a bottle shape is both new and visually distinctive, meaning that it would be recognised as
different to other bottles on the market, does not mean that it would convey to someone who was not a
trade mark specialist that it was intended to be an indication of origin or that it performed that function.8 This
dictum was quoted with approval by the English Court of Appeal in Bograin9 where Jacob LJ rejected the
proposition that even a very fancy shape is
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necessarily enough to confer on it an inherently distinctive character. He said:10
"As a matter of principle I do not accept that just because a shape is unusual for the kind of goods concerned, the
public will automatically take it as denoting trade origin, as being the badge of the maker. At the heart of trade mark
law is the function of a trade mark expressed in Recital 10 of the Directive [of the European Community] as an
indication of origin. The perception of the public of the average consumer is what matters. Mr Daniel Alexander QC,
for the Registrar, helpfully pointed out that the kinds of sign which may be registered fall into a kind of spectrum as
regards public perception. This starts with the
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most distinctive forms such as invented words and fancy devices. In the middle are things such as semidescriptive
words and devices. Towards the end are shapes of containers. The end would be the very shape of the goods. Signs
at the beginning of the spectrum are of their very nature likely to be taken as put on the goods to tell you who made
them. Even containers, such as the fancy Henkel container may be perceived as chosen especially by the maker of
the contents (eg shampoo) to say 'look here is the product of me, the maker of the contents'. But, at the very end
of the spectrum, the shape of goods as such is unlikely to convey such a message. The public is not used to mere
shapes conveying trade mark significance . . .. The same point was made about slogans in Das Prinzip der
Bequemlichkeit, para 35:
'the authorities may take account of the fact that average consumers are not in the habit of making assumptions
about the origin of products on the basis of such slogans'."
[9]
Since containers are not usually perceived to be source indicators, a container mark must, in order to be able
to fulfil a trade mark function, at least differ "significantly from the norm or custom of the sector". This appears
from one of the Henkel judgments (supra) of the European Court of Justice where this was said:11
"In those circumstances, the more closely the shape for which registration is sought resembles the shape most likely
to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive
character . . .. Only a trade mark which departs significantly from the norm or customs of the sector and thereby
fulfils its essential function of indicating origin, is not devoid of any distinctive character . . .."
But, as mentioned, the mere fact that it does so differ does not necessarily mean that it is capable of
distinguishing because the question remains whether the public would perceive the container to be a badge
of origin and not merely another vessel.12
[10] Jeremy Phillips points to yet another aspect and that is the dependency of shape marks (the same applies to
container marks) on other marks such as word marks.13 The dependency may be such that, as we know is
the case
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in the present instance, the trade mark owner did not trust the bottle "to do this job [of identification of trade
source] on its own".14
[11] A registered word mark does not give copyright protection and, likewise, it is wrong to assume that container
marks give a patentlike or industrial designlike monopoly in the container itself. 15 As Andrew Phang Boon
Leong J said in National Fittings:
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"whilst the court should recognise and give effect to the rights of registered trade mark holders wherever appropriate,
it should also bear in mind the fact that such rights should not be permitted to either blatantly or subtly develop into
disguised monopolies which stifle or stymie the general public interest and welfare."
[12] Section 20(4) of the 1963 Act permitted the registrar to accept an application for registration subject to