It is not always necessary to choose simply for one of the two options, both protections can be obtained with respect to the same product shape and/or packaging. One does not exclude the other, but both complement each other.
The shape of a product can be protected as a community design (CD) if it meets the requirements of novelty and individual character, while to be protected as a three-dimensional community trade mark (CTM), the shape of the product must possess a sufficiently distinctive character so as to be distinguished from other companies products.
For example, a container can be protected as a CTM and a CD if its novel shape becomes synonymous with the products of a company, and can therefore be registered as a mark, as well as being protected as a design because of its unique character and novelty.
The protection afforded by each one of these signs is completely different: the CTM protects the distinctive character of the sign, while the CD protects the product’s novelty and singular character.
It is therefore possible to have a very original shape and not to be able to protect it as a CTM if it is not distinctive with respect to the products or services applied for, or if the shape fulfils a technical function of the product itself. And it may have a design which has been used prior to filing the application, which therefore cannot be protected as a CD as it does not provide novelty.
However, not every shape or packaging can be easily protected as a CTM: they must meet the requirements of distinctive character and technical function.
In other words, if we want to protect a shape or packaging which is the same as, or too similar to, the product’s natural or usual shape, it is clear that its distinctive character is limited, and therefore its registration as a CTM would be denied.
With respect to the technical function requirements, community legislation prohibits the registration of a CTM whose basic characteristics fulfil a technical function.
The reason for this prohibition is to avoid a monopoly which unfairly prevents competitors from marketing identical or similar products which meet that function.
One final difference between the protection granted by a CTM and a CD is duration. The CTM, like other trade marks, does not have any time limitation: it can be renewed indefinitely for periods of ten-years, while the CD has a maximum duration of 25 years from the date of the registration application.
Therefore, depending on the case, both legal options can be chosen in order to obtain greater protection.