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Intellectual Property

South Africa

Trademark Shapes

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In order to trademark shapes your mark needs to consist of a three-dimensional shape. It is typically considered a non-traditional trade mark.  Other non-traditional trade marks include position marks and gesture marks. Examples of well-known shape marks are the Weber Kettle braai, the old Coca-Cola glass bottle, KitKat chocolate bars and Toblerone chocolates.

When it comes to successfully registering your trade mark as a shape, due consideration should be given to the shape’s technical function, practicality and utilitarian purpose. Prior to 1993, it was not possible to obtain trade mark registration for a shape in South Africa due to the fact that shapes are usually perceived by consumers as a functional element or addition to the product, rather than serving as a badge of origin. 

After the enactment of the 1993 Trade Marks Act, this position was changed, as South Africa now recognises the registration and protection of shape trade marks, provided the shape is capable of distinguishing the goods or service of one trader from another.  However, the Act prevents the registration of a shape as a trade mark if the shape results from the nature of the goods themselves, or if a trade mark consists exclusively of a shape which is necessary to obtain a specific technical result or is likely to limit the development of any art or industry.

An example of a shape trade mark that was registered, but subsequently removed from the South African Trade Marks Register, was the popular shape of the Augmentin (amoxicillin/clavulanic acid) tablet in the case of Triomed (Pty) Limited v Beecham Group Plc & SmithKline Beecham Pharmaceuticals.  In this case, the court ruled that “where a functional product is bought because of the functionality attained by its shape and not the aesthetics thereof, such a shape would not be capable of distinguishing and is likely to limit the art or industry if registered”.  As such, the functionality of the particular shape and it’s technical or practical use are important considerations in determining whether the shape is capable of distinction. 

If you have a novel and distinctive shape for the packaging of your goods, for example, and such shape differs significantly from other packaging commonly found for similar products in the market, we may assist you to secure registration of your shape trade mark for the packaging.

The following guidelines are applicable for filing shape marks:

  • the application must be lodged in relation to the goods to which the shape trade mark is applied;
  • the shape must be distinctive in relation to the specific goods;
  • the application must clearly and precisely define the shape;
  • the application must include an appropriate written description (endorsement);
  • the shape mark should be in the form of perspective or isometric drawings (if practicable) that show clearly all the features of the trade mark;
  • the application should include drawings, views and/or photographs of the trade mark.

Smit & Van Wyk can assist with the registration and enforcement of shape trade marks in South Africa.

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