School of Law

Lynne Chave

PhD Student, Faculty of Social Sciences



Lynne Chave is a doctoral student at the School of Law. Her thesis focuses on the protection afforded to three-dimensional shapes in Europe under the trade mark and design registration schemes. This explores the potential for and the implications of securing protection for the same product shape under both schemes of protection. Lynne completed an MA (Hons) in Physics at the University of Oxford, before qualifying as a UK Chartered Patent Attorney, a European Patent Attorney and a Member of the Institute of Trade Mark Attorneys. Working for a number of years as a partner in private practice, she advised a wide range of businesses how best to establish, maintain and enforce their intellectual property rights. Lynne went on to obtain an LLM in International Commercial Law from the University of Nottingham.

Research Summary

In Good Shape? A comparative evaluation of the registration of 3D product forms as designs and trade marks under EU and US Law

Lynne's research evaluates whether EU law governing registration of 3D product shapes as designs and trade marks is fit for purpose.

Appropriate supra-national regulation of intellectual property (IP) rights is an emerging challenge for the 21st century knowledge economy, exemplified by the varying nature and extent of existing legal protection for product shapes in different jurisdictions. This was aptly illustrated by the recent high-profile litigation between Apple Inc and Samsung over alleged copying of Apple's protected iPhone and iPad products.

In the competitive world of consumer goods, businesses invest heavily in novel product design and packaging to attract consumer interest and differentiate their goods from rivals'. However, legal responses to market innovation have often been belated, incomplete and unsatisfactory. While design and trade mark law have been harmonised at EU level, contradictory interpretation of key provisions by national tribunals persist. Should the technical shape exclusion of design law align with the equivalent exclusion of trade mark law, or are the differences between these legal regimes such that alternative functionality doctrines are justified? EU trade mark law theoretically recognises product shapes as trade marks, but in practice most shape applications fail to satisfy the basic requirement for "distinctiveness" and others are excluded on technical or aesthetic criteria. Are these current exclusions appropriately formulated or necessary at all?

Evaluating protection schemes for product shapes raises interesting issues. While certain shapes are necessary to make products work and others make the product appealing to buy or indicate who has made the product, most product shapes combine elements of all three functions, such that overlapping IP rights is almost inevitable. Intellectual property laws are crafted to balance the competing interests of stakeholders to meet the objective of that protection. Each IP regime employs the definition of subject matter, protection threshold and scope of protection (i.e. which third party activities can be prevented) to achieve a balance. This works well, provided that the same aspect of any creation qualifies only for a single form of protection. Overlaps threaten to upset the balance. While cumulation of rights is not necessarily problematic in all cases, undesirable results can arise.

The research will commence with a library-based exposition and critique of the judicial application of existing legislation, which will be followed by normative policy analysis. Having first appraised current protection of product shapes under the separate registration regimes of design law and trade mark law in the EU and USA, the research will then consider the circumstances in which overlapping trade mark and design protection is possible and the extent to which registered protection overlaps with unregistered protection, before applying these findings to evaluate whether safeguards in place are adequate to eliminate or mitigate any over- or under-protection identified.

The ultimate aim of the research is to develop an intellectually coherent, normatively well-grounded and practically viable framework for protecting product shapes under design and trade mark law, taking proper account of the potential significance of doctrinal IP overlaps.

Supervisors: Professor Estelle Derclaye and Dr Andrea Tosato

Primary Funding Source: AHRC Studentship

School of Law

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