Product shapes are among the most visually distinctive assets a brand owns, yet they remain one of the most fragile forms of intellectual property protection. A recent ruling in Kazakhstan involving a gummy bear-shaped trademark illustrates that popularity and visual ubiquity can undermine, rather than strengthen, efforts to secure exclusive rights. Global Trademark Enforcement Tightens Amid Digital Speed
For business leaders and legal strategists, this case underscores a critical reality: registering a three-dimensional mark does not guarantee immunity from challenges, particularly when the shape has become an industry standard rather than a unique identifier.
The Core Dispute
The controversy centered on international registration No. 1408424, which designated Kazakhstan for a three-dimensional trademark featuring the iconic gummy bear shape for confectionery products in Class 30. The mark was originally registered in 2019 by Rigo Trading S.A., the parent company behind the HARIBO brand.
Perfetti Van Melle Benelux B.V. challenged this registration, arguing that the gummy bear form had evolved from a unique brand identifier into a common product design used across the confectionery industry. They contended that consumers view this shape merely as the appearance of the candy itself, not as a signal of its commercial origin.
The challenge began at the Appeal Board of the Ministry of Justice, which initially rejected Perfetti Van Melle’s argument in 2024. However, the dispute moved to the Astana Administrative Court, where the dynamics shifted significantly based on consumer perception and market reality.
Distinctiveness vs. Customary Use
The legal pivot point was whether the gummy bear shape retained its "distinctive character." Under Kazakh law, signs that have become customary for particular goods cannot be registered as trademarks because they lack distinctiveness. Navigating Trademark Law: Insights Into Confusability and Monitoring
Perfetti Van Melle submitted substantial evidence showing that numerous manufacturers - including Trolli, Nestlé, Rahat, and Roshen - marketed similar gummy bear-shaped confectionery. The claimant argued that this widespread adoption meant the shape was now a generic product form.
The courts agreed. In their ruling, the Astana Administrative Court emphasized that three-dimensional trademarks require a sufficiently original visual appearance to distinguish one trader’s goods from another. Because the gummy bear shape was already deeply embedded in the market, it failed to function as a source identifier.
Key factors in this decision included:
- Visual Uniformity: The court noted that minor differences in color, size, or design details were insufficient to establish distinctiveness when the overall silhouette remained common.
- Consumer Perception: Judges determined that the average consumer would perceive the shape as a standard product feature rather than a brand logo.
- Independence of Rights: The courts explicitly rejected arguments based on foreign trademark office decisions, reaffirming that trademark rights are territorial and independent under the Paris Convention.
Subsequent appeals to the Court of Appeal and the Cassation Court in late 2025 upheld these findings, partially invalidating the registration for "fruit jelly confectionery products."
Implications for Brand Strategy
This judgment highlights a complex layer of trademark law that businesses often overlook: the dynamic nature of distinctiveness. A shape may be registrable today if it is novel, but it can lose protection tomorrow if competitors successfully mimic it to the point where the public no longer associates it with a single source. Brand Owners Eye DotBrand Extension
The Trap of Success
The gummy bear case illustrates a paradox for brand owners. When a product design becomes highly successful and widely imitated, it risks becoming "customary" in the eyes of the law. Instead of protecting the brand, its widespread adoption dilutes its legal strength. Companies must monitor not just who is copying their exact logo, but who is adopting similar product architectures that could blur brand boundaries.
The Necessity of Vigilant Monitoring
Trademark monitoring cannot be static. Businesses must look beyond word marks and logos to include packaging and product shapes in their surveillance efforts. If competitors begin using a shape that your company owns, acting quickly is essential. Delaying enforcement allows the shape to become entrenched in the market, making future legal challenges significantly harder to win. L'Oreal vs nkd Salon Exposes IP Risks for SMEs
Beyond Registration
Registration is not a finish line, it is a starting point for ongoing protection. Companies relying on three-dimensional marks must maintain clear evidence of how they promote the distinctiveness of their product designs through advertising, packaging, and consumer education. Without active reinforcement, even registered shapes can lose their protective shield if the market perceives them as generic.
Conclusion
The Kazakhstan gummy bear case serves as a vital precedent for intellectual property strategy in emerging markets. It confirms that three-dimensional trademarks are vulnerable to cancellation if they lose their distinctive character due to widespread industry use. For global brands, this means that protecting product shape requires proactive legal strategies, constant market monitoring, and a clear understanding that popularity can inadvertently erode legal exclusivity.