On 12 July 2022 Bayerische Motoren Werke Aktiengesellschaft (“BMW”) filed an Australian shape trade mark for the famous Rolls Royce hood ornament, the Spirit of Ecstasy. Here is an extract from the register:
The mark relies upon a priority application filed in Germany around two weeks before the Australian application was filed. Interestingly, it is not filed in the name of BMW’s subsidiary Rolls-Royce Motor Cars Limited, which has been the exclusive manufacturer of Rolls-Royce branded motor cars since 2003.
This application is not for the original robed figure designed in 1909 by English sculptor Charles Robinson Sykes, notoriously modelled on Eleanor Velasco Thornton, and redesigned by Sykes in 1913, 1934 and 1946. Instead, this is a new, more dynamic figure with one knee extended forward. The redesign is for the new Rolls Royce Spectre EV, due for released in 2023.
This, not unexpectedly, is not the first Australian trade mark application for the Spirit of Ecstasy. The oldest dates back to 1971 – see https://search.ipaustralia.gov.au/trademarks/search/view/246319 . This 1971 registration was filed long before the 1995 Australian legislation which expressly introduced the concept of shape mark registrations. Shape marks can be difficult to register in Australia (and a lot more on shape marks being used in the automotive industry in future posts): in Woolworths Limited v BP Plc (No. 2) [2006] FCAFC 132 at [117] the court said:
It is necessary for BP to establish that the association is referrable to the use of the mark as a trade mark…to establish distinctiveness through use the proprietor must have done something in its use to identify the sign as being a trade mark; the use of a sign, without more, does not necessarily create the perception that the products originate from a particular trade source.
Given the notoriety of this particular hood ornament, modified or otherwise, I am not however expecting an examination problem with this application. The question is whether the mark, or something so nearly resembling, is one which other traders are likely to desire to use in the ordinary course of their business without improper motive. The answer to that is obvious.
A quick dig around on the internet does not indicate any litigation arising from unauthorised use of the Spirit of Ecstasy. It seems unlikely that BMW is concerned about the risk of Rolls Royce owners seeking to retrofit their old cars with the new ornament, but this instead this is an exercise at mitigating the problem of replica productions. After all, it does not take much effort to find unauthorised replicas of the Spirit of Ecstasy for sale on sites like Etsy.