Shape Mark (Trade Dress) Distinctiveness: A Comparative Inquiry into U.S. and E.U. Trademark Law

Nowadays, the increasing application of visual elements, as non-traditional trademarks, to convey commercial information has brought about some new challenges to pioneer legal systems. In this regard, the question of shape marks’ (trade dress) distinctiveness has also caused some hot debates in U.S. and EU trademark law. Indeed, the most challenging legal question before those legal jurisdictions is about the method of transplanting the concept of trademark distinctiveness into the mechanism through which shape marks, as visual mediums, perform a trademark communicative function. Technically, the indefinite nature of shape marks or trade dress marks and lack of a definitive or pre-intended source of meaning has made them unpredictable in terms of distinctiveness examination. This Article has employed a comparative perspective to investigate the U.S. and EU’s historical and current legal positions towards shape marks’ distinctiveness. This Article has also found that both the U.S. “ontological tests” and EU “significant departure criterion” suffer from the heavy emphasis on the “distinguishing” capability among other comparable shapes or designs and ignorance of the “source-identifying” function of shape marks. Furthermore, their endeavors for posing the question of inherent distinctiveness in a contextual environment will make the normative parts of the tests useless and cause time and cost expenditures. Finally, having considered the competitive and public interests in EU and U.S. trademark law, this Article suggests that relying on a market-led approach, in which the collected information from the relevant consumers is the most decisive method in finding distinctive character