Distinctive product shapes can be as memorable as the names or logos that accompany them. Some of the world’s most recognisable product shapes are protected as three-dimensional (3D) trade marks. The appeal of 3D marks lies in their ability to safeguard the unique visual and structural identity of a product; beyond mere logos or words. However, achieving registration of such marks in the UAE remains a nuanced process under applicable local trade mark laws, particularly where the mark’s distinctiveness is linked to a product’s function.

Registrability

The Federal Decree Law No. 36 of 2021 on Trade Marks (hereafter the UAE Trade Marks Law) expressly recognises the registrability of 3D trade marks. Under Article 2, a trade mark may include, inter alia, “three-dimensional marks…”

However, Article 3(16) provides an important limitation, excluding from protection any mark that “consists of a shape resulting from the nature of the goods specified in the registration application or necessary to achieve a technical result; without any substantive elements that distinguish it from others.”

This means that for a 3D mark to be registrable, it must possess inherent distinctiveness; that is, the ability of the shape itself to identify the source of the goods or services, independent of functional or generic features. Functional or commonplace shapes, even if visually appealing, will typically fall short.

For example, a bottle shape that merely serves to hold liquid or facilitate pouring would (or should, at least with stricter examination scrutiny expected nowadays) likely be deemed functional and thus ineligible for protection. Conversely, a uniquely contoured bottle incorporating distinctive, non-functional design features may qualify if those elements serve primarily as a brand identifier rather than a utilitarian feature.
The key question is whether the shape’s features go beyond functionality to perform a distinctive, source-identifying role in the eyes of consumers.

Acquired distinctiveness

Unlike certain other jurisdictions — such as Australia, the EU or the UK — the UAE Trade Marks Law does not address the concept of acquired distinctiveness (secondary meaning). This refers to situations where a mark that may not have been inherently distinctive at the time of filing becomes distinctive through extensive and exclusive use in the marketplace.

In the UAE, there is no explicit provision allowing applicants to rely on acquired distinctiveness to overcome objections relating to lack of inherent distinctiveness. This means that even where a shape has been used extensively, supported by significant sales data, purchase orders, and evidence of advertising and promotion both locally and internationally, the likelihood of overcoming such objections remains limited, at least theoretically.

When faced with distinctiveness objections, applicants should focus on two key strategies:

• Emphasising the presence of substantive non-functional elements within the design that differentiate the shape from others in the market - notable displays of already registered and/or well-known house marks could serve that purpose.
• Arguing that the mark has attained a level of recognition or fame that renders it distinctive, even in the absence of a specific statutory route for proving acquired distinctiveness.

The latter argument, however, may be constrained by the relatively narrow interpretive scope afforded by Article 3(16), which appears to favour the protection of designs that are genuinely distinctive and non-functional.

Takeaways

While the UAE Trade Marks Law expressly accommodates the registration of 3D trade marks, applicants should make sure that their designs possess clear, non-functional features that are inherently distinctive and capable of identifying commercial origin.

Given the absence of a statutory mechanism for recognising acquired distinctiveness, applicants cannot rely solely on use-based evidence to establish registrability. Instead, the focus should be on demonstrating that the 3D mark contains substantive, non-functional elements that set it apart from ordinary product shapes, and, where possible, on highlighting the mark’s reputation as being uniquely associated with the applicant.

In essence, the registrability of 3D trade marks in the UAE hinges on the uniqueness of the shape design rather than commercial familiarity. The more the shape departs from the norms of its category, while avoiding functional necessity, the stronger its case for protection under the UAE Trade Marks Law.