Consider the Challenges for the Law of Trademarks

The intellectual property law classifies trademarks into two main categories- traditional or the conventional marks and the non- traditional or the non- conventional trademarks. A non conventional trademark is relatively a new category of law within the trademark law and is very different from the pre-existing conventional trademark categories. The pre-existing traditional trademark categories generally included trademarks consisting of numbers, letters, pictures, logos, symbols and words. With the increase in trade, technology and fierce competition the traders came up with more sophisticated trademarks to attract their potential buyers and to effectively distinguish and uniquely identify their commercial goods and services from another. These marks were based on shapes, smell, taste, sound and texture etc. For this reason a number of legislative developments have been done recently to widen the scope of trademark definition. ‘These developments have originated from international treaties dealing with intellectual property including the Agreement on Trade Related Aspects of Intellectual Property Rights, which sets down a standardised, inclusive legal definition.’ [1]

One such example is granting ‘colour’ as a trademark in the UK. The ECJ in the Libertel Case [2] broadened the ambit of the Article 3(1)(b) of the 104/89 Directive to include colour as a having a distinctive character and thus being registrable as a trademark if it can be graphically represented. The court further explained that for colour to be capable of being represented graphically must be ‘precise, intelligible, clear, objective, self contained, durable and easily accessible; which is also called the Sieckmann criteria.’ [3] The same was the case in the H.J Heinz Company Case where the turquoise colour was registered as a trademark for the product. The other such examples in UK and the EU have been the registration of the telecommunication Orange Company successfully registering the colour orange, the purple colour of the Cadbury chocolate company etc. In UK such registrations are generally granted when these non-conventional marks are granted towards specific and in limited contexts, like for marketing or packaging of the goods or services. The other examples of such non-conventional registrations could be the registrations of three dimensional shapes like for the Toblerone chocolate bar for its distinctive shape, the olfactory marks, aural marks or the gustatory marks.

Another example of a non-conventional trademark that can be registered is a three dimensional shape; this is capable under the Trade Mark Act 1994 for the sahpe of goods or their packaging. However, because of the difficulty in fulfilling the UK Trade Marks Registra, showing that a shape shows a consumer the trade origin of a propduct rather than its technical function, there are still few registrations for shape trademarks. An exmple of a shape that has been marked in Europe is the protection granted to the chocolate bar Toblerone for its distinctive triangular shape.

A non-conventional trademark, also known as a nontraditional trademark, is any new type of trademark which does not belong to a pre-existing, conventional category of trade mark, and which is often difficult to register, but which may nevertheless fulfill the essential trademark function of uniquely identifying the commercial origin of products or services.

The term is broadly inclusive as it encompasses marks which do not fall into the conventional set of marks (eg. those consisting of letters, numerals, words, logos, pictures, symbols, or combinations of one or more of these elements), and therefore includes marks based on appearance, shape, sound, smell, taste and texture.

Non-conventional trademarks may therefore be visible signs (eg. colors, shapes, moving images, holograms, positions), or non-visible signs (eg. sounds, scents, tastes, textures).

Nonconventional Trademarks – Document Transcript

EMERGING TRENDS IN INTELLECTUAL PROPERTY LAW: NON-CONVENTIONAL TRADEMARKS Shradha Diwan Research Analyst Institute of International Trade

Trademarks are traditionally understood as marks which uniquely identify the commercial origin of products and services. A non-traditional or non-conventional trademark is a new type of trademark which does not belong to the pre-existing exhaustive category of a traditional trademark, and is often difficult to register, but which nevertheless fulfills the essential criterion of being a trademark – uniquely identifies the commercial origin of the product. The conventional set of marks includes those consisting of letters, numerals, words, logos, pictures, symbols, or combinations of one or more of these elements. Therefore, the non- conventional marks are based on appearance, shape, sound, smell, taste, and texture. Increasing commercial competition and a growing consumer society has forced brand owners to innovate newer methods of outshining their competitors, thus augmenting their own products with a distinctive edge. The non-conventional trademarks have grown to be widely accepted in recent times as a result of legislative changes which expand the definition of “trademark”. Such agreements are a result of treaties like trade related aspects f intellectual property rights (TRIPS) agreement, which sets down a standardized, inclusive legal definition. Throughout the European Union, trademarks are protected by registering the mark as a community Trademark with the office for harmonization in the internal market (OHIM). The exclusive statutory right is governed by the Community Trademark Regulation (CTMR), which is harmonized across the European Union through the EU Trademark directive (TMD). According to Article 2 of the TMD and Article 4 of the CTMR: A Trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings SMELL MARKS (also called SCENT MARKS) Smell is one of the most potent types of human memory. Businesses are now showing increasing interest in coupling their products with particular types of smells in order to give them a distinctive edge. Smell marks are potentially capable of being registered as they can indicate the commercial origin of goods and services. But in practice, it is very difficult to fulfill the condition of graphical representation of a smell. The United Kingdom’s first smell mark was granted to Japan’s Sumitomo Rubber Co. in 1996 for “a floral fragrance of roses as applied to tyres”. The mark was later transferred to Shradha.Diwan@gmail.com

Dunlop Tyres. A Dutch company’s tennis balls with the scent of newly mown grass, and Unicorn Products’ (a London-based maker of sports equipment) smell mark for darts with “the strong smell of bitter beer”, are some examples where smell marks have been successfully registered. However, the OHIM disagrees with the UK registrations. The Sieckmann Criteria: In trademark law, Sieckmann v German Patent Office (case 273/00) issued on December 12, 2002, is already a famous case concerning registration of non-traditional trademarks. It is of a smell mark described as “balsamically fruity with a slight hint of cinnamon”. In the application filed for the smell mark, it was clearly mentioned that registration was sought for the olfactory mark (smell mark) of a pure chemical substance, methyl cinnamate (= cinnamic acid methyl ester). The chemical formula was also written (C6H5-CH= CHCOOCH3). Apart from this, a sample of the smell was also submitted. A graphical description of the smell was also provided as mentioned above. However, Sieckmann was refused a trademark by the German Patent Office on the ground that it was doubtful whether the trademark was capable of being registered and of being represented graphically. The European Court of Justice ruled that the requirement of graphical representation was not satisfied by the above measures i.e. Scientific Formula Description in written words Depositing a sample of odor, or A combination of these methods This case paved the way for the famous Siekmann criteria which include granting trademarks to those marks which can be represented graphically by the means of images, lines or characters, where the representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective. The Sieckmann case has made it very difficult, if not impossible, to register smells as trademarks. This case may be looked upon as the closing door for smell marks in Europe, at least until a new method is developed to identify smell marks. An additional obstacle to the registration of smell marks is that the smell must not be the outcome of the nature of the good itself. For example, the scent of a perfume, being the very essence of the product, cannot be registered as a trademark. Shradha.Diwan@gmail.com

SOUND MARKS (Aural) For sound marks, there have been alternate methods for the graphical representation of sounds. These include – depictions by oscillogram, spectrum, spectrogram, and sonogram. There are many sound marks registered in different countries around the world. Jingles, such as the Nokia ring tone, “roar of a lion” used by MGM (where a sound sonogram or spectrogram adequately represented the roar as it depicted pitch, progression overtime, and volume), and the chime used by NBC, all have a distinctive character, and assist in the identification of products, thus defining their commercial origin. The EU has registered the signature tone of Nokia Corporation as below: MGM’s “Roar of a Lion” is registered as below: The European Court of Justice has specifically excluded written descriptions like the sign of the notes making up the musical work, or the cry of an animal; onomatopoeia; or simply a sequence of musical notes. However, the WIPO has agreed that “Offices may require that the representation of sound marks consist of a musical notation on a stave, a description of the sound constituting the mark, or an analog or digital recording of that sound – or of any combination thereof. Where electronic filing is available, an electronic file may be attached Shradha.Diwan@gmail.com

to the application. However, for some jurisdictions, only a musical notation on a stave may be considered to adequately represent the mark”. It was held that the seven Sieckmann requirements were satisfied by musical notation if it is ‘represented by a stave divided into measures and showing, in particular, a clef, musical notes and rests whose form indicates the relative values and, where necessary, accidentals (sharps, flat, natural)’. It is thus clear that, unlike smells, sounds can be represented graphically and are regarded as trademarks worth being protected. TASTE MARKS (Gustatory) The SCT reports that “the graphic representation requirement was satisfied by using a written description of the taste and an indication that it concerns a taste mark” – but the hurdle of distinctiveness is even harder to overcome as are assertions concerning functionality. Pharmaceutical company Eli Lily’s attempt to register a trademark for the taste of artificial strawberries was rejected by the OHIM stating that “Any manufacturer… is entitled to add the flavor of artificial strawberries to those products for the purpose of disguising any unpleasant taste that they might otherwise have or simply for the purpose of making them pleasant to taste… Moreover, the taste is unlikely to be perceived by consumers as a trademark; they are far more likely to assume that it is intended to disguise the unpleasant taste of the product…” In the Benelux countries there have been registrations of a few trademarks such as the “taste of liquorice” applied to Paper goods and Printed matter, represented using a written description. However, registration of taste marks seems highly unlikely in the future if seen from the perspective of the Sieckmann criteria. MOVING IMAGES, HOLOGRAMS AND GESTURES: The moving image can be a film clip, video, moving logo for TV shows, etc. The UK has registered a moving mark for Kraft Foods UK Ltd. The mark has a description which says: “The mark consists of the three- dimensional shape breaking apart, as shown in the sequence of still pictures attached to the form of application”. Shradha.Diwan@gmail.com

The Lamborghini’s doors are registered with the EU on the following description: “The trademark refers to a typical and characteristic arrangement of the doors of a vehicle, for opening the doors are “turned upwardly”, namely around a swiveling axis which is essentially arranged horizontal and transverse to the driving direction”. One example of a registered hologram is CTM 2117034, which has the explanation: The letter VF in white on blue spheres, the name VIDEO FUTUR in blue on a black background”. (See picture given alongside) Mars BV has a registration in the Benelux Trademark Register for a gesture of two cutting fingers. This gesture is recognized as the commercial origin for TWIX chocolate. BX No. 520574. COLOR MARKS In the United Kingdom, colors have been granted trademark protection when used in specific, limited contexts such as packaging or marketing. The particular shade of turquoise used on cans of Heinz baked beans can only be used by the H. J. Heinz Company for that Shradha.Diwan@gmail.com

product. The UK and the EU have several registrations for colors: the Cadbury’s purple for chocolate, BP’s green for vehicle service stations and Orange’s registration for the color orange for telecommunication services. FEEL MARKS (Tactile marks) Recognition may also be achieved by a single touch of a certain object. The glass bottle of Coca Cola was designed in 1915 to also be recognized in the dark. CONCLUSION Other examples of non-conventional trademarks would also include a shape trademark recognized in Europe is the protection granted to Toblerone, a company which manufactures chocolate bars with a distinctive triangular shape. The protection of non-conventional trademarks is still an under-developed part of intellectual property law. It is often argued that such characteristics should not be allowed to be monopolized. The tough criteria set in the Sieckmann case already have enough space to prevent such monopolies, aiming to promote novel traders who wish to use novel signs to market their products. Those products who have managed to receive trademark registrations prior to Sieckmann are surely going to have a tough time enforcing them. They now run the risk of being declared invalid. References: World Intellectual Property Organization – Online Resource Center Shradha.Diwan@gmail.com