Subject Matter for Trademarks

With the significant development and globalisation of the economic activities and liberalization of trade and business, there is an obvious trend of expansions of the patterns of trade marks. As the response to this international trend, nearly all the countries extended their protection field of trademarks gradually, even in different degrees. In general speaking, the journey of this expansion is expressed without the limitation of visual signs, such as acoustical and olfactory perception. Although in the international society, different states hold different perspectives of this issue, it could not be denied that taking non-traditional signs, such as colour signs, sound signs and smell signs into the registered trademarks and giving it relative legal protection is the mainstream design idea in the modern international world.

This essay aims on discussing the issues about non-traditional trade marks in the terms of registering and legal protection, at the background that more and more non-traditional signs appearing in the current business and trade society. However, in order to criticize effectively, this paper mainly take the sound mark, colour marks and smell marks as the most typical examples to analyze the relevant issues. Firstly, this essay states the relevant background of trade mark, especially the non-traditional ones, not only discussing its definition but introducing its importance as well. Then it illustrates the general requirements for trade mark registration, in terms of distinctiveness and non-functionality. In this section, it aims to form a basic ground to differentiate what kind of non-traditional sign could get the possibility to be registered. Finally, it gives out some specific requirements for non-traditional trademarks registration in details. In this part, it analyzes the possibility and the way of registering a trade mark, from the aspects of sound marks, colour marks and smell marks in separate.

Background

As the coming of non-traditional signs has made a vital impact on the development of trademark field, especially in the way of registration and protection, it is suggested to analyze the relationship between the traditional trademarks and non-traditional ones, to make a more clear sight for discussing the issues surrounding the topic of non-traditional trademarks.

Definitions

As the articles 2 and 4 of the Trade Mark Directive and Community Trade Mark Regulation state the definition of a trade mark:

“any sign capable of being represented graphically, …, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings”.

Furthermore, as some EU Members State’s law give the definition a more extensive explanation, for example German Trade Mark Law concludes the non-traditional signs as a kind of trade marks，such as acoustic signs and three-dimensional forms.

On the basic of the definition of a trade mark, it has been accepted widely that in the current world, non-traditional signs could have the possibility to be a kind of trademarks, which differ from the previous conventional trade marks in terms of presentation format, like appearance, shape, sound and smell. What’s more, when it has the intention to take this non-traditional sign into the group of registered trademarks; it has to fulfil all the essential requirements, as asked for previous traditional ones. What’s more, as accepted broadly, the non-traditional trademarks contain the categories, as described in the Agreement on Trade-Related Aspects of Intellectual Property Rights, like: single or combined colour trademarks, acoustical trademarks, olfactory trademarks etc. (wiki �?�考 external links)

The importance of non-traditional trade marks

As the progress with the era, the marketing activities, aiming at attracting potential customers, are becoming fiercer and fiercer. Trademarks, as one of the most significant element to attract customers, are playing a fundamental role in business practices. Accordingly, the critical part of designing a trade mark refers to how to draw the attention of customers at the first glance and leave a dominant impression to them.

On the basic of that, the non-traditional signs could give a more opportunistic circumstance for competitors creating different and novel kinds of trademarks to satisfy the above demands. It could also expect to get more stimulation on the development of industry and commerce business as well.

On the other hand, introducing non-traditional trademarks could make it easier to clarify the essential feature among different merchants. This helps customers making a better decision on choosing from similar competitive commodities. Therefore, the non-traditional trademarks get an increasing numbers of respects from the merchants. Hence, it could be said that the non-traditional signs for trademarks are the outcome from the development of current business and the modern trade market.

Consequently, with the development of increasing categories of trademarks and numbers of applications for non-traditional trademarks, it is necessary to take the issue, how to make sure whether a non-traditional sign could be affirmed as a trade mark or not into account seriously. If it could be treated as a trade mark, in the process of registration, how to represent it is another intractable problem.

General requirements for trade marks

The non-traditional trademarks accord with the description of protected objects in intellectual property law, which is a property arising from human intellect and human creation. So it could be said that it should be protected under the intellectual property law. (客体文章) For further stating, it is believed that non-traditional trademarks could be registered, as long as they satisfied all the requirements that previous registered trademarks need to obey, except for the different patterns of representation.

In the following part, it talks about the general requirements for non-traditional signs to register as a trade mark. In other words, if it has a wish to be incorporated into the registered trademark group, it should meet all the following requirements, requirements of distinctiveness and non-functional, at the first step.

Distinctiveness

As the definition of the trade mark, the main demand for registration is to be capable of distinguishing the goods or services from one to another. Therefore, the core part is to guarantee the trade mark has its own distinctiveness to make sure the customers could recognise its origin.

Inherent distinctiveness

Some trade mark has its distinctiveness by its nature, which also called inherent distinctiveness as well. It is this feature that makes the trade mark unique and makes it have the qualification to register. Accordingly, whether the sign has the inherent distinctiveness or not is the key problem in the process of registration. The most acceptable way to figure this question out is by the method of showing it to the public market to see if the customers could recognise its origin immediately or not. If they could, that means the trade mark is born with its inherent distinctiveness to make itself distinguished.

Even with the feature getting formed from the product itself, what should be mentioned is that the registration could not go against the rule of commonality. This rule is got from the principle of fair competition. That means if the sign used by the product is the sign or colour used commonly in the whole relevant area, it could not be allowed to be registered. The reason for this is considering the situation of fair competition. In other words, if the law allows only one company to use the sign representing for the whole field and forbidden other competitors to use that, it will form such an unfair issue for the other competitors.

Acquired distinctiveness

The sign that needs an acquired distinctiveness is the one that may be designed just by the creation, without any natural relationship with the goods itself. The acquired distinctiveness, which has another name of secondary meaning, could not be formed until the public people get to used to this sign and build the relationship between the sign and the products after putting this sign into the market. When the trade mark gets the acquired distinctiveness, which makes it capable of showing its origin and distinguished from others, it gets an element condition to be registered.

Non-functionality

The doctrine of functionality is the theory got from the case of Brunswick Corp. v. British Sragual. (Ref) As its content, the feature of one product getting from its own functional working could not be treated as a distinctiveness element to make it be registered. That means, the sign should be without utilitarian or technical functionality, if there is an intention to register it as a trade mark. What’s more, the sign should be such a product design, aiming at showing its origin and distinctiveness, instead of being as just packaging, which is only aiming to attract customers’ attention and evoke their desire to buy the commodities. (�?�士 p26，ref46)

In the current world, there are four factors usually used to test whether it is a the functionality feature of a trade mark, which include: the existence of the utility functionality, the existence of advertising or promotion, the existence of other alternative designs that act the utility function as well and whether the design coming from the method of manufacturing the article. (P ref 56) By this method, it could be able to make sure whether the feature is got from the functional work or not. In other words, this method helps to test whether a sign gets the qualification to be registered as a trade mark.

Specific requirements for non-traditional marks

As mentioned above, to let the non-traditional signs get into the rank of registered trademarks, how to confirm the distinctiveness, and whether there is any criteria of how to represent non-traditional signs for recording turns to be the key problems in the process of registration. In this part, it will discuss these problems, in the terms of different types of non-traditional trademarks, such as sound marks, colour marks and smell marks, separately.

Sound marks

As one of the non-traditional trademarks, there are two kinds of sound marks: the one could be recorded by notation and the other one could not, like the sound from animal or kind of machine. It has been always believed that, (NM P45) for registering as a trade mark, both kinds need to prove for its acquired distinctiveness relating to the products. To prove this connection, it demands numbers of evidences. Firstly, it needs to prove the exclusive and continuous use of it connected with the commodities. This may accept as a prima facie evidence for proving the acquired distinctiveness. Then, there needs some evidences of the long use of advertising expenditures for this kind of non-traditional trademarks, which refer to non-musical trademarks here. Finally, it needs to get the proof from the reorganization and acceptance of the connection between the sound and products by the public. If the non-musical sign satisfies all the above conditions, it could be treated as the sound got a secondary meaning connected with the product.

How to represent the sound mark as a record for registering is another core issue. As the sound mark could not be represented visually, it has to find a way to represent itself. As in the case of Shield Mark, the ECJ holds the idea that sound marks could get registered, but needs represented graphically with distinctiveness. Although the court did not give a specific mode of how to represent or describe the sound, it indicates a general guideline to be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”. (NM P45) In present, the common way to record these is to use the musical note, such as stave, or verbal description, or both of them. Sometimes, a sample of the sound record is used as an addition.

There are some cases supporting the above statement. One successful registration case is a sound mark registration by NBC Company. It registered G, E, C played on chimes as the trade mark for their broadcasting services. The MGM lion’s roar is another typical example. Despite the TRIPS, EC Directive and CTM are all silent on this issue of sound mark registering. It could not be denied that the sound could help to distinguish from one goods or service to another, which makes it possible for sound registering as a trade mark. As in UK Act, it allows to register a sound mark, as long as the applicant could provide the evidence that the sound mark could act the role that a normal trademark always does. (NM p 46)

Colour marks

Colour marks, as a kind of non-traditional trademarks, could be separated into two categories, single colour marks and combination colour marks. The fierce divergence on whether colour marks should be treated as trademarks or not concerns on the consideration of “shade confusion” and “colour depletion”. (Ref) The former doubt has almost been figured out by the way of using the Pantone Code, which is a system that categorizes different kinds of colours and assigns each colour a unique serial number. This unique code makes each colour distinguished from one to another, to avoid the shade confusion. However, the latter problem, “colour depletion”, currently, is still the issue being discussed. As in some countries, like Canada, they hold the idea that colour is not registrable. They treat colour just as a part of the trade mark, which means the trade marks could consist one or more colours as a part of its design, but the colour without contour could not be acceptable as an independent trade mark. (�?�文 p10)

Nevertheless, most countries hold the point of view that colour could be registered as trademarks, such as Australia, United States, France and so on. Still, the secondary meaning of the colour should be required when registering a colour mark. Furthermore, the US Supreme Court in Aualitex Co v Jacobson Products Co posed some factors to affirm whether there is a secondary meaning connecting the products and the colour mark: (NM P46) firstly, the extent of third party use, then, the direction of the sales and advertising turning to the colour of the products, finally, consumer studies and surveys indicating towards the importance of the colour.

Another essential part of the trade mark registration is the representation section of colour marks. As mentioned above, the single colour registration should be described by the way of using the international colour code to make it clear. When it turns to the kind of combination colour, it does not only need the description by international colour code, a systematic arrangement with the colours concerned in a predetermined and uniform way is also needed to be described as well. (�?�桑尼亚 p7)

Smell marks

The Court made two classifications of the products connected with fragrances. While the fragrance from one kind of products is added to the product, the other one is the kind with the scent arising from products itself, like perfumes and cologne. As the former one may have the possibility to get registered, but needs a secondary meaning proved, the latter one definitely could not be registered, due to the reason of breaching the non-functionality requirement. (NM P45)

However in practices, the key contradiction, how to register a smell mark, concerns on how to represent it graphically. Despite there are some successful cases of registering smell trade mark, for example the OHIM had accepted the descriptions of “the smell of fresh cut grass” and “the scent or smell of raspberries” as a graphical representation, most of the applicant, especially after the case of Sieckmann, failed to register a smell mark, with the reason that they could not satisfy the requirement of representing the smell graphically. The Sieckmann Case set a much stricter limit for representing a fragrance. In that case, the board stated that the simple description of the smell or a chemical formula or deposit of a sample all could not be sufficient enough for representation.

Another argument has been posed that the reason why smell could not be registered is that there are many elements, like temperature, humidity and wind conditions, affect the smell. Furthermore as the subject of smell, “personal variables” plays a critical role of determining what kind of fragrance it smells. That means, even with the same scent, different person holds various ideas what it smells like. Therefore, even the spectral analysis of scents fails to make out an accurate standard for trademark registration of a smell mark. (NM P 45)

Despite the US court recognizes the olfactory mark to be registered, as the case of In Re Celia Clarke, there are still unclear how to present a smell mark graphically in the process of registration. Even TRIPS, EC Directive and community trademark (CTM) have not addressed relevant protection for smell marks. No further mentioning most countries do not incorporate smell marks as part of their registered trademarks and some countries, like France and Germany, leave this area open for applicant’s option.

Conclusion

As what has been discussed above, it could be concluded that as the field of non-traditional trade mark registration, especially in terms of sound marks, colour marks and smell marks, it is still blurring in the issue of whether it could get registered and in the process of registration, how to present it. So many unclear and unsolved problems have been left in relevant area making the situation confusing. Therefore it is hoped that there could be such a great progress that could make the rules in this area more explicit and find a more effective way to represent and record the non-traditional signs when registering them.