Shape of striped slug of toothpaste not a valid trademark

The Federal Commission of Appeal for IP Rights has refused to register the shape of a slug of toothpaste featuring different coloured stripes as a trademark in Class 3 of the Nice Classification (Case MA-AA 02/04, November 10 2004).

Colgate-Palmolive Company applied to register the shape with the Swiss Federal Institute of Intellectual Property (IGE). The IGE refused registration on the grounds that the mark represented only a normal or expected shape of toothpaste that has been squeezed out of a tube and was therefore not capable of being used as an indication of the source of the goods.

On appeal, the Federal Commission of Appeal for IP Rights upheld the refusal. It first examined the question of whether the shape was a trademark within the meaning of Article 1(1) of the Swiss Trademarks Act. It held that the shape of a slug of toothpaste could not be a trademark since consumers could not see it before buying the product. Such a shape could therefore not fulfil the function of a trademark, namely to indicate the source of the product to consumers.

The commission further held that coloured toothpaste, including three layers of different colours, is (i) common on the market, and (ii) generally regarded as indicating the composition of the product, not its source.

The commission did not consider it decisive that (i) the same mark was registered in foreign countries, and (ii) similar shapes had been registered earlier by the IGE. The commission was of the opinion that there was a time when many questions regarding the registrability of three-dimensional marks remained open, but this was no longer the case with regards to slugs of toothpaste.

For discussion of another case involving Colgate-Palmolive's attempt to register the shape of a slug of toothpaste as a trademark in Switzerland, see Registrar brushes off Colgate's toothpaste shape mark registration.

Peter Heinrich, Lenz & Staehelin, Zurich