This is article three of three looking at the registrability of shape marks.

This article considers shapes which give substantial value to the goods. Out of the three heads of non-registrable shape marks this is the least matured or defined. Again we find ourselves looking at the Philips case in that if the shape gives the good substantial value then really it should be registered as a patent or design and not as a trade mark which gives monopoly protection.

The one case to note is Benetton Group SpA v G-Star International BV (Case C-371/06) [2008] ETMR 5 in which it was held that registration for two shape marks for jeans was invalid where the public recognition was as a result of extensive advertising. In basis distinctiveness acquired through use could not negate the bar to registration under the TMA.