The fate of Yakult’s attempt to register their indented container as a trade mark underlines the challenge of passing the ‘distinctiveness’ test, but what about registered designs?
Who: Kabushiki Kaisha Yakult Honsha
Where: Chancery Division of the High Court, London
When: March 2001
The makers of the cultured milk drink product "Yakult" attempted to register the shape of the Yakult container as a trade mark, but their appeal to Chancery was unsuccessful and registration was refused. The bottle featured an indentation running round the middle of the bottle which provided a finger grip and was accepted by the Court as "eye catching". The test for trade mark registration purposes, however, was whether the container shape was distinctive as a "badge of origin" denoting the source of the product inside it. This could be the case if the shape was either inherently distinctive or had become distinctive of the Yakult makers as a result of advertising and sales. On the "inherent distinctiveness" point the Court agreed with the Registrar that the indentation did not prevent the container’s shape from being essentially ordinary and non distinctive. Had the shape achieved "acquired distinctiveness" by use? Again the answer was "no." This was because by the date the application to register was filed (the critical date for these purposes) the Yakult had only been on sale for seven months. These had risen to £200,000 sales in the month before filing but much of these "sales" were by way of promotional giveaways. A field survey didn’t help because the questions were loaded by showing an unbranded Coke bottle and asking whether it was recognised, then showing an unbranded Yakult bottle and asking if "this time" the shape was recognised. Otherwise there was no evidence that in marketing the product the makers had placed any particular emphasis on the bottle shape as a piece of branding.
Why this matters:
Field surveys are notoriously difficult to construct so as to provide bomb-proof supporting evidence on consumer perception points. Also, brand owners will do well to take note that unless a container shape is spectacularly different from the rest of the field, "acquired distinctiveness" is the only viable route to achieving a trade mark registration. Even then, care should be taken to emphasise distinctive container shapes in all marketing and promotion and sufficient time allowed before filing the application for distinctiveness to be built up. Alternatively consideration might be given to filing an application to register the shape as registered design. Design registration is relatively quick and cheap and gives a fair level of protection.