The vast majority of trademark applications filed in Denmark are still trademarks consisting of words (word marks) and logos (figurative marks). However, a number of trademark applications have also been filed to protect the less “traditional” trademarks, such as trademarks consisting of sound (sound marks), video (multimedia marks), the shape of a product (shape marks) or the specific way in which a trademark is placed on or affixed to a product (position marks).
Recently, Kamstrup A/S has made use of the two last-mentioned options and has applied for trademark registration of a shape mark and a position mark in Denmark for their iconic water meters with the blue ring. The water meters also bear traditional trademarks, which Kamstrup A/S has trademarked – the word marks KAMSTRUP®, flowIQ®, and MULTICAL®.
’Inherent’ distinctiveness and the exception of ’acquired’ distinctiveness
One of the challenges with such shape marks and position marks is that they must not simply be perceived as a form of decoration/ornamental element, but as an indication of origin that originates from a specific company and thus functions as a badge of origin thereof. For that to be the case, these trademarks – shape marks and position marks – must differ significantly from the norm or customs of the sector for the products in question in order to possess the necessary ’inherent’ distinctiveness to obtain a trademark registration. This is also called original distinctiveness or distinctiveness from the beginning.
When a trademark application is filed, it usually only contains 1) information about the applicant, 2) the trademark, and 3) the products and/or services for which the trademark is to be used.
The Danish Patent and Trademark Office therefore did not have much information in order to assess Kamstrup A/S’ trademarks initially. Consequently, the Danish Patent and Trademark Office was naturally cautious and considered that Kamstrup A/S’ shape mark and position mark would not at first be perceived as a distinctive trademark but rather ornamentation and therefore did not have the necessary distinctiveness for water meters.
Examples of Kamstrup A/S’ water meters
Such an objection can be overcome if one submits evidence of so-called distinctiveness acquired through use. The evidence must document that at least a significant proportion of the relevant customer group has come to perceive the trademark as an indication of origin for the products in question so that the trademark has acquired distinctiveness and is perceived as a trademark originating from the applicant – the customer group must therefore have ’come to perceive’ the trademark as a badge of origin. The evidence must thus document that the trademark in question, in consequence of the use which has been made of it, has obtained the necessary distinctiveness in order to be registered.
In close collaboration with Kamstrup A/S, trademark experts from Plougmann Vingtoft prepared for this situation and could therefore already shortly after receiving a preliminary refusal from the Danish Patent and Trademark Office submit a convincing amount of evidence, which documented that a significant proportion of the relevant customer group for Kamstrup A/S’ water meters had come to perceive the shape mark and position mark as indications of origin for Kamstrup A/S’ water meters. The Danish Patent and Trademark Office therefore approved Kamstrup A/S’ trademarks and registered them with a comment that the trademarks are registered on the basis of acquired distinctiveness. Therefore, both the shape mark and the position mark are now registered as trademarks for Kamstrup A/S’ water meters in Denmark.
Kamstrup A/S was able to document that their shape mark and position mark had been used since 2009/2010 and continuously until the application date (a period of 12-13 years), that the trademarks were used in relation to water meters, and that Kamstrup A/S had ensured a systematic and intensive exposure of the trademarks to the relevante customer group throughout the years. Kamstrup A/S had also obtained a declaration from a trade association which represents a considerable part of the relevant customer group of Kamstrup A/S’ water meters.
Position mark
Shape mark
The manner in which the water meters are trademarked (the graphical representation of the trademarks has been made by a Danish design agency based on instructions from Plougmann Vingtoft and approved by Kamstrup A/S).
If you also consider registering your trademark and you are hesitant whether the trademark has the required distinctiveness in order to obtain trademark registration – either inherent distinctiveness or as a result of the exception of acquired distinctiveness – you are welcome to contact one of our trademark experts for a non-binding initial discussion thereof.
