Cartier’s trade mark application for the “Love” bracelet as a shape trade mark has been rejected at the Australian Trade Marks Office. The bracelet, designed in 1969, features a screw mechanism and can only be opened and closed with a tiny Cartier screwdriver.
The Trade Marks Office considered that the shape of the product was not distinctive, as the evidence provided by Cartier failed to demonstrate that the shape of the bracelet featuring the “screws” alone was distinct.
In Australia, there is a requirement to demonstrate that the shape alone can function as a trade mark. In other words, brand owners must demonstrate that consumers can associate the shape to the brand owner, akin to the general threshold test which trade mark applications must pass in demonstrating they’re capable as acting as a “badge of origin”.
In this situation, Cartier were unable to demonstrate that the shape and “screw” features of the bracelet alone were distinctive, since the evidence provided generally featured the bracelet alongside Cartier, or the name of the product “Love”.
The outcome also follows a similar Opposition decision in New Zealand regarding the well-known “Nutri-Grain” shape, in which Kellogg’s also failed to demonstrate that the shape of the cereal could function as a trade mark on its own.
Both decisions demonstrate the importance of developing a filing strategy to ensure that there is sufficient evidence to demonstrate that a brand owners shape has acquired recognition as a trade mark, supporting the manner in which the application is lodged. This includes the way in which the shape is promoted to consumers and how the shape stands out in the marketplace.
Longstanding use of a shape is generally necessary to demonstrate the commercial success and reputation of the shape in the marketplace, as at the filing date of the application. However, this decision demonstrates that longstanding use of a shape alone is not sufficient. This is because the shape applied for will be assessed on its own merits, and without the reliance on the reputation of the brand owner.