Three-Dimensional Trademarks: Why Is Registration So Difficult to Obtain?

OMC Abogados | Three-dimensional trademarks constitute a category of marks that is relatively little known, used, or applied for registration by companies in Peru.

They are perhaps infrequently sought not only in Peru but also in other jurisdictions, as in order to obtain registration they must pass through several substantive filters before succeeding. This high threshold for registrability often discourages business owners from seeking protection for this type of sign.

As their name suggests, three-dimensional trademarks consist of the three-dimensional shape of products, or of their packaging or wrapping, which distinguishes them from those of competitors in the marketplace. Pursuant to Article 134(f) of Decision 486 of the Andean Community, the aforementioned signs—that is, the shape of products, their packaging, or wrapping—may constitute trademarks, in the same manner as words, images, sounds, and other registrable signs.

In legal doctrine, these signs are commonly recognized as capable of constituting three-dimensional trademarks. The definition provided by Fernández Novoa—frequently cited by the Court of Justice of the Andean Community and in decisions issued by the Specialized Chamber on Intellectual Property of INDECOPI—defines a three-dimensional trademark as "that which is constituted by the particular shape of containers, receptacles, packaging, or other product conditioning, or by the shape of the products themselves."

Based on this definition, a clear example of a three-dimensional trademark is the shape of Hershey’s "Kisses" chocolates. The product itself has a particular, special, and distinctive shape—resembling a drop or teardrop of chocolate—that is not shared by other products of the same kind. This three-dimensional mark has been registered in several jurisdictions, including Mexico, where registration of such signs is generally considered difficult to obtain.

As noted by Carlos A. Cornejo Guerrero, "in general, doctrine and national and Andean case law define a three-dimensional trademark as one constituted by the particular or arbitrary shape of the product or its packaging; it is understood to be a body with volume that occupies the three dimensions of space: height, width, and depth."

As may be observed, these definitions refer to the shape of products or their packaging, but they do not encompass other three-dimensional forms that may also qualify as trademarks.

For this reason, Cornejo Guerrero argues that the aforementioned definition is somewhat limited, as it does not cover, for example, three-dimensional forms that distinguish products without constituting the shape of the product itself, nor does it include three-dimensional forms capable of distinguishing services. Accordingly, the author proposes a broader definition, describing a three-dimensional trademark as "any three-dimensional form that serves to identify and differentiate products or services from their counterparts in the marketplace. It may consist of particular shapes of products, their packaging, wrapping, containers, or receptacles; of three-dimensional forms that distinguish products without constituting their shape; or of three-dimensional forms suitable to distinguish services from their counterparts in the marketplace."

An example of a three-dimensional mark that distinguishes a product—vehicles in this case—but which, for obvious reasons, does not consist of the shape of the product or its packaging, is the three-pointed three-dimensional star of Mercedes-Benz.

With respect to three-dimensional marks that distinguish services, one example registered in the United States consists of the three-dimensional shape of an octopus holding various cleaning devices in its tentacles, used to distinguish car-washing services.

Like any other distinctive sign, three-dimensional trademarks must satisfy the requirement of distinctiveness in order to be registrable. It is well established that signs lacking distinctiveness cannot obtain registration.

In addition to this general requirement, however, three-dimensional trademarks—unlike traditional marks—must comply with further conditions:

• They must not consist exclusively of the usual shape of the product or its packaging;

• They must not consist of shapes or characteristics imposed by the nature or function of the relevant product or service;

• They must not consist exclusively of shapes or elements that confer a functional or technical advantage on the product or service to which they are applied.

Allowing the registration of marks consisting exclusively of such forms would create a barrier to market entry for competitors seeking to use those shapes to distinguish their own products or services.

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