Trademarks shouldn’t be linked to product functionality, says IP lawyer on Lexus TM application
15 August 2022
Trademarks should not be linked to how a product functions, according to Nina Fitzgerald, a partner at Ashurst in Sydney.
Fitzgerald made the statement in reference to IP Australia’s rejection of Toyota Motor Company’s trademark application for its luxury vehicle brand Lexus’s spindle grille design in Australia. The decision was handed down on May 31, 2022.
According to an article in Australian magazine Car sales. IP Australia stated that the spindle grille design does not distinguish Lexus cars from those of other vehicle brands.
Fitzgerald agrees. She said that for a mark to be registered as a trademark, it must be inherently adapted to distinguish the goods of the applicant from the goods of others, and must not have any functional purpose for the said good or product.
In the case of the Lexus trademark application, IP Australia did not find sufficient evidence establishing that the spindle grille alone - without other Lexus branding such as the Lexus logo - would be identified by consumers as being part of the luxury vehicle.
The evidence showed that the spindle grille was always accompanied by the Lexus logo. According to Fitzgerald, this signifies that most likely, consumers would identify the grille by this alternative Lexus branding rather than the shape of the grille alone.
“In reaching this conclusion, the Delegate found that the shape [of the grille] was, at least in part, dictated by function, that is, the shape optimized airflow and temperature of the engine to prevent overheating. It was not solely for the purpose of distinguishing the applicant's goods,” explained Fitzgerald.
"Trademarks should not be linked to how a product functions. If the particular shape/design is necessary for the good to operate properly,” she said, “other traders in the field should also be permitted to use that shape/design.”
Fitzgerald added that IP Australia also found that the shape was not sufficiently unique.
The Carsales article likewise noted that IP Australia had rejected Toyota’s trademark application for the spindle grille design thrice between May 2020 and November 2021. In March 2022, a hearing was set to give Toyota a chance to present oral evidence. On this occasion, a representative from the Japanese automotive company said that the spindle grille design is an invented shape and does not aid in the functionality of the Lexus luxury vehicles.
The spindle grille design debuted in 2011 when the 2011 Lexus LF-Gh concept (Lexus Future Grand-touring Hybrid), a rear wheel drive hybrid platform, was first unveiled during the 2011 New York International Auto Show.
- Espie Angelica A. de Leon