Shaving the Trade Marks Directive Down to Size?
Robert Burrell* and Huw Beverley Smith**
Prior to the implementation of the Trade Marks Directive,1there was a long line of
authority in the United Kingdom to the effect that product shapes and containers
should not be registrable as trade marks.2This consensus was built around three
principal beliefs, namely, (i) shapes of goods and their packaging are incapable of
acting as signs in the trade mark sense and hence cannot perform a trade mark
function;3(ii) trade mark protection for shapes would be too strong a form of
protection in that it would create potentially perpetual monopolies over articles and
containers;4(iii) such protection would create an overlap with patents and designs
law and might act as a fraud on the public in that it could be used to prevent an
invention / design from falling into the public domain after the patent / registered
design has expired.5
In contrast, the Directive reflects the view that the shape of goods and their
packaging can, in certain circumstances, perform the orthodox trade mark function
of indicating that the goods emanate from a particular source.6Hence the shape of
ßThe Modern Law Review Limited 2000 (MLR 63:4, July). Published by Blackwell Publishers,
108 Cowley Road, Oxford OX4 1JF and 350 Main Street, Malden, MA 02148, USA.
* Lecturer in Law, King’s College, London.
** Lecturer in Law, University of Wales, Aberystwyth.
Our thanks go to Lionel Bently, Allison Coleman and Graeme Dinwoodie.
1 Council Directive 89/104/EEC. Hereafter, the Directive. The Directive was implemented in the United
2 Starting with Re James’s Trade Mark  LR 33 ChD 392, decided a mere ten years after the
passage of the UK’s first registered Trade Mark Act, the Trade Mark Registration Act 1875.
3 See Re James’s Trade Mark,ibid 395; Coca-Cola Trade Marks  RPC 421, 457–458.
See Coca-Cola Trade Marks, ibid 457. See also Report of the Departmental Committee on the Law and
Practice Relating to Trade Marks (Goschen Committee) Cmd 4568 (London: HMSO, 1934) para 13;
British Trade Mark Law and Practice (Mathys Committee) Cmnd 5601 (London: HMSO, 1974) para 58.
5 See Goschen Committee Report, ibid para 13; Mathys Committee Report, ibid para 60. This objection
is based on the ‘dedication’ justification for industrial property systems. On this view the function of
the patent and registered design systems is to provide the inventor / designer with a monopoly in return
for her placing the invention/design in the public domain. As such the disclosure to the world can be
seen as the quid pro quo for the granting of a monopoly and hence, once the period of monopoly has
expired, the public has a right to use the invention/design and it should not be possible to use trade
mark law to interfere with this right. It should be noted, however, that there are alternative views of the
function(s) of registration. For example, in the context of registered designs, it has been argued that one
function of registration is to centralise information about design in such a way that the registration
system operates as a ‘collective memory’. See L. Bently, ‘Requiem for Registration?’ in A. Firth (ed)
Perspectives on Intellectual Property Vol I: The Prehistory and Development of Intellectual Property
Systems (London: Sweet & Maxwell, 1997), in particular 44–46. Moreover, the balance of authority
favours the view that there was never an absolute prohibition on the registration of a trade mark where
the applicant had previously enjoyed some other form of intellectual property right: Interlego AG’s
Trade Mark Applications  RPC 69;
Sobrefina SA’s Trade Mark Application  RPC 672;
United States Playing Card Company’s Application  1 Ch 197. But compare
Charles Goodall &
Son vJohn Waddington (1924) 41 RPC 658; Moore’s Modern Methods Application (1919) 36 RPC 6.
See Wagamama Ltd vCity Centre Restaurants Plc  FSR 713, 730; Scandecor Development AB v
Scandecor Marketing AB  FSR 500, 519; Philips Electronics BV vRemington Consumer