Distinctive signs, especially trademarks, are one of the most distinguished business instruments within the globalized market economy, and which extend throughout the different continents due to the invention of their owners, due to investment in new markets or even under legal figures such as the Franchise or Use Licenses.
Brands per se have the objective of identifying a product or service and differentiating it from its similar ones in the market, thus becoming an essential tool to attract and consolidate clientele.[1].
The brand, for the businessman, is the basis for achieving a profitable business, in such a way that they are constantly looking for them to maintain and expand their clientele, which allows them to consolidate themselves in the market as stable companies. As part of this search in business practice, the use of three-dimensional trademarks began over time, which has posed challenges in the legal field, since it was necessary to provide protection in the first instance to packaging, containers and packaging.
The first trademarks recognized by the various legislations of the XNUMXth century were nominative, figurative and mixed trademarks; that is, those that consist of a conformation of words, figures or a combination of both, respectively, as a way to identify, distinguish and differentiate products or services.
At that time, the intrinsic characteristics could not be used to individualize the product or service as a brand, within those characteristics was its three-dimensional shape, understood by this as its height, width and depth, since these details were considered to lack distinctiveness.
In general, according to the different doctrine and jurisprudence, a first definition of a three-dimensional mark is given, about which we can say that it is that mark constituted by the particular or arbitrary shape of the product or its packaging; that is to say, that it is a body with volume that occupies the three dimensions of space (height, width and depth); For example, the INDECOPI Court "understands that, according to the doctrine, a three-dimensional mark is one made up of particular shapes of containers, containers, packaging, or other conditioning of the products or their shape." [2]
This definition allows us to point out the importance and suitability of the protection of three-dimensional brands, which is why the first to acquire this importance and to be recognized as such, was the shape of the product or container, an example of which is the Coca Cola bottle. Over time, three-dimensional trademarks evolved along with the products or services, and this is how the definition provided fell short in terms of the protection that was needed at that time, in such a way that three-dimensional trademarks no longer consisted solely of the packaging. traditional, wrappers or containers.
As competition increased in terms of the number of products and services within the market, the brands evolved and adapted to the needs of an increasingly demanding clientele.
In this case, three-dimensional brands ceased to conform to the usual form of the product, an example of which is the three-pointed star that goes on the front of Mercedes Benz cars and that today is one of the most important intangible assets of the company. It is easy to appreciate that this three-dimensional mark does not consist of the usual shape of the product, we can also find that the designs of certain restaurants have been protected, such as the case of Freddie Fuddruckers[3] and like this, various examples of three-dimensional trademarks protected over time that differ from the first definition given in which three-dimensional trademarks were recognized only for products.[4]
In the case of the Andean Community countries, it is noted that: "The employer can distinguish the service offered to its customers or the general public, through a three-dimensional shape that has distinctiveness and that serves to differentiate and distinguish them from others, offered by third parties. The norms of subparagraphs b) and c) of Article 82 of Decision 344, also apply to services, and may, consequently, be registered three-dimensional forms of services that are not the usual or common and that keep distinctiveness.”[5]
Regarding the registrability of this type of trademark, we must take into account that it must meet three fundamental requirements: the first is that it must have distinctiveness, understood as intrinsic and extrinsic distinctiveness; second, it must consist of a non-necessary or usual form of the product or service, and third, it must be treated in a way that does not provide a functional or technical advantage to the product, since this is not the purpose of three-dimensional marks.
Regarding the current legal frameworks, most of them already regulate three-dimensional trademarks for all kinds of products or services, in addition there are also International Treaties for the unification of trademark registration processes, including three-dimensional ones that are always for the benefit of the owners. of said brands.
[1]On the concept and functions of the trademark, see the author: Trademark Law, second edition, 2007, p. 17-18 and 67 to 88, as well as The transformations of trademark law and its relations with property rights, pp. 32 to 46.
[2] See Resolution No. 1326-2005/TPI-INDECOPI, p. 122.
[3] Freddie Fuddruckers v. Ridgeline (ND tex 1984, 9th.Cir. 1987)
[4] Another example is found in the judgment Fotomat Corporation v. Cochran -194 USPQ 128
[5] Judgment of the Court of Justice of the Andean Community, Process No. 23-IP-98