Section 3(1)(a) of the Trade Marks Act 1994 (the Act) states that:

3. - (1) The following shall not be registered -

(a) signs which do not satisfy the requirements of section 1(1),

The reference to s1(1) of the Act relates primarily to the words “capable of distinguishing” which must be construed by reference to the essential function of a trade mark, which the ECJ has in  Philips v Remington described as being:

…to guarantee the identity of the origin of the marked product to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin, and for the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish, it must offer a guarantee that all the goods or services bearing it have originated under the control of a single undertaking which is responsible for their quality

To be registrable a mark must be a ‘sign’, an independent and fundamental requirement which, if not considered met, will result in an objection under section 3(1)(a) being raised prior to any full examination .

The underlying purpose of the requirement to be a ‘sign’ is to prevent the abuse of trade mark law by obtaining an unfair competitive advantage.  Trade marks being renewable indefinitely, shapes in particular are problematic (see Megablocs v Lego)

In particular the mark must be strongly and specifically tied to the representation to form a sign.  In Dyson, Case C-321/03 the ECJ felt that an unfair competitive advantage was being sought by the applicant who, in the description on his initial form and by admission during proceedings, stated that the application covered all conceivable shapes (and colours) of transparent bins, of vacuum cleaners. 

The use of the words “as shown in the representation” were consequently found to be an ineffective means of fixing the mark to collecting bins of the particular shapes shown in the application and if the intention is to fix a mark to the particular shape shown in a pictorial representation of the mark, applicants should use unequivocal wording, such as “of the shape (and/or in the position/location) shown in the representation”.

Trademarkroom