non-conventional trademarks
21 January 2011
Non-conventional trademarks come in various guises; smells,
tastes, sounds, shapes, colours, slogans (see Audi’s recent success
with registering “Vorsprung durch Technik”) and even gestures (a
finger tapping a nose has been registered by Derbyshire Building
Society) and moving images (eg, BT’s revolving globe internet
icon).
This article provides a legal update on the more common
non-conventional trademarks, highlighting the challenges facing
applicants looking to register these types of trademarks.
Absolute grounds for refusal
The following main absolute grounds for refusal apply to all
types of trademark application filed in the UK and the
Community:
- The trademark is incapable of being represented
graphically
- The trademark is devoid of any distinctive character
- The trademark is descriptive
- The trademark has become customary in the current language
However, the saving grace is that grounds 2 to 4 do not apply
where a trademark has acquired distinctiveness through use.
Smells and taste
Unfortunately, most olfactory (smell) and gustatory (taste)
applications fall at the first hurdle (ground 1) as it is extremely
difficult to represent them graphically.
Historically, it was acceptable to describe such marks in
writing, for example “the smell of fresh cut grass” for tennis
balls in Vennootschap Onder Firma Senta Aromatic Marketing’s
registration filed in 1996.
However, in the seminal case of Sieckmann v Deutsches Patent-
und Markenamt, Case 273/00, 12 December 2002, the European Court of
Justice (now Court of Justice of the European Union) (“CJEU”)
clarified that marks may only be registered if capable of graphical
representation, “particularly by means of images, lines or
characters” if that representation is “clear, precise,
self-contained, easily accessible, intelligible, durable and
objective”. The CJEU refused Sieckmann’s application to register an
olfactory mark comprising methyl cinnamate on the basis that these
requirements were not fulfilled as the written description,
“balsamically fruity with a slight hint of cinnamon”, was not
sufficiently clear, precise or objective, the chemical formula was
not sufficiently intelligible and the odour sample was not a
graphic representation, nor was it sufficiently stable or
durable.
OHIM clarified in Eden Sarl’s application for “the smell of ripe
strawberries” that the graphical representation must represent the
odour itself, not the product emitting the odour (in this case, a
picture of a strawberry was submitted along with the written
description).
The Sieckmann criteria are applied equally to gustatory marks
(eg, Eli Lilly’s application for “the taste of artificial
strawberry flavour” from pharmaceutical preparations, which was
refused by OHIM).
Even if an applicant were to overcome this first hurdle, it
would still have to show that consumers attributed the origin of
the product to the applicant based on its fragrance in order to
prove that it had distinctive character (see Myles Limited’s
application in 1999 for “the scent of raspberries” for fuels, which
was rejected under ground 2).
Consequently, there are currently no registrations on the CTM
register for olfactory marks and the only olfactory registrations
on the UK register are pre-Sieckmann and are therefore probably
vulnerable to revocation.
Sounds
In the leading case of Shield Mark BV v Joost Kist, C-283/01,
the CJEU held that sounds are capable of registration provided that
they are graphically represented (fulfilling the Sieckmann
criteria) and distinctive.
The Shield Mark case confirmed that the graphical representation
requirement can be met by use of a musical stave. However, written
descriptions (eg, a list of notes, a song referred to by name or
the sound an animal makes) and onomatopoeia are insufficiently
clear and precise and spectrograms are not self-contained as their
interpretation requires costly specialist equipment (see Edgar Rice
Burroughs, Inc’s application for the “Tarzan yell”).
To make things even easier, for CTM applications made online,
there is now an option of filing an electronic sound file in
support of the application.
In order to get over the distinctiveness hurdle, the sound mark
must be used and perceived as a badge of origin. This
distinctiveness is often acquired through use.
There are currently a total of 138 sound trademarks on the CTM
Register including Haribo Ricqles Zan’s recent application for the
Haribo jingle and Churchill Insurance Company Limited’s recent
successful registration for the Churchill dog saying “Oh Yes” for
insurance services.
Shapes
Shape (3D) marks generally fall in to one of the following three
categories:
Category A - The shape of the goods themselves
Category B - The shape of the packaging of the goods
Category C - Shapes unrelated to the goods themselves
Passing the first hurdle of graphical representation is normally
quite easy for shape marks, provided that an applicant files both a
written description of the mark and one or more pictures satisfying
the Sieckmann criteria.
However, the difficulty is that in practice, the average
consumer does not tend to perceive category A or B marks as a badge
of origin. This point is illustrated by the recent rejection by the
CJEU of various applications to register the shape of dishwasher
and washing machine tablets (see Proctor & Gamble v OHIM,
Joined Cases C-468/01 P to C-472/01 P and Henkel KGaA v OHIM,
Joined Cases C-456/01 P and C-457/01 P).
The recent case of Chocoladefabriken Lindt & Sprüngli AG v
OHIM, T-336/08, T-337/08, T-346/08 and T395/08 in which the CJEU
held that the shapes of a chocolate bunny, reindeer and bell lacked
distinctiveness as they are typical seasonal shapes used for
chocolate confectionery, particularly for Christmas and Easter
demonstrates the public interest argument of preventing one company
having a monopoly over the use of characteristic shapes.
Therefore, in order to be distinctive, category A and B marks
will need to depart significantly from the norms of the sector,
illustrated for category A marks by the Rubik’s Cube (see Simba
Toys GmbH & Co KG v Seven Towns Limited, Case R 1526/2008-2)
and LG’s champagne flute-shaped loudspeaker (see LG Electronics
Inc, Case R 782/2010-2) and for category B marks by a
hexagonal-shaped packet for tobacco products (see Philip Morris
Products SA v OHIM, Case R 373/2006-2).
How significant that departure has to be will be affected by the
type of product/service to which the application relates because
distinctiveness is assessed by reference to both the type of
product/service and the perception of the average consumers of that
product/service. For example, in Philip Morris, as well as the
hexagonal packaging being unusual it was found that smokers pay
great attention to the particular brand that they are buying.
Category C marks, eg, Kellogg’s Tony the Tiger for cereals, on
the other hand, are more likely to be inherently distinctive.
In addition to the absolute grounds 1 to 4 for refusal noted
above, there are also the following three additional absolute
grounds for refusal specifically relating to shape marks:
Shapes which result from the nature of goods themselves
Shapes of goods which are necessary to obtain a technical
result
Shapes which give substantial value to the goods
Ground 5 is not used very often as its application is limited to
where the shape in question is the only shape in which you can make
that product (see Proctor & Gamble v OHIM, T-63/01 in which
ground 5 was held not to apply to a concave bar of soap as soap
could and does come in various other shapes).
Ground 6 was the subject of the case of Philips Electronics NV v
Remington Consumer Products Ltd, Case C-299/99 in which the CJEU
held that Philips’ registration for a three-headed rotary shaver
was invalid because the essential functional features of that shape
were attributable only to the technical result.
The CJEU has recently ruled that Lego’s long-contested CTM for
its red Lego brick is invalid under ground 6, confirming that
“necessary” does not require that the shape must be the only one
capable of obtaining the result. The two rows of studs on the upper
surface of the brick were found to be entirely functional and the
only non-functional aspect of the sign, the red colour, was
insignificant. This conclusion seems appropriate given that Lego
only applied for the CTM following expiry of their patent in 1996
and the Court of Appeal stated in Philips that ground 6 exists to
prevent companies from obtaining a monopoly over technical
developments that should be the subject of a patent.
Ground 7, although rarely invoked, was relied upon by Benetton
in its attack (by way of defence to infringement) on the validity
of G-Star’s shape marks for various patterns of seams and stitching
on jeans (Benetton Group SpA v G-Star International, Case
C-371/06). Benetton argued that the shapes at issue determined the
market value of the goods to a great extent, as a result of their
beauty or original character. Following a reference by the Supreme
Court of the Netherlands, CJEU ruled that, if this were the case,
then the fact that, prior to the trade mark application “the shape
had acquired attractiveness as a result of its recognition as a
distinctive sign” did not rescue the position from G-Star’s point
of view. Ground 7, unlike grounds 2 to 4, cannot be overcome
through proof of actual distinctiveness.
Colours
In the UK and Community systems, it is possible to register
colours per se, either as a single colour or a combination of
colours.
The leading case of Libertel Groep BV v Benelux-Merkenbureau,
C-104/01 taught that in order to graphically represent a colour
whilst satisfying the Sieckmann criteria such a mark should be
described in writing and by reference to an internationally
recognised colour identification system (eg, Pantone). A sample of
the colour is insufficiently durable, thus does not fulfil the
Sieckmann criteria.
In order for the graphical representation of a combination of
colours to be sufficiently precise it must be “a systematic
arrangement associating the colours in a predetermined and uniform
way” (see Heidelberger Bauchemie GmbH, C-49/02).
Although the test for distinctiveness is the same for colour
marks as any other, as with shape marks, it is often harder to
prove that a colour is distinctive as consumers do not generally
think of colour being an indication of origin of the goods.
Additionally, in order to register a colour per se it will be
necessary to prove that it is distinctive irrespective of the
medium on which it appears.
In the recent case of Xtechnology Swiss GmbH v OHIM, T-547/08,
Xtechnology’s application for a mark consisting of the orange
colouring of the toe of a sock failed for lack of distinctive
character. The court held that the mark did not depart
significantly from the norms or customs of the sector and as socks
are low-value goods, the relevant public would not pay a
significant amount of attention to their purchase and would
probably in any event perceive the colouring as decoration or as a
functional element connected with the reinforcement of the toe, not
an indication of origin.
Conversely, the recent decisions of the OHIM Board of Appeal (R
1620/2006-2) and the Federal Court of Australia ([2010] FCA 639)
both allowed registrations of Whiskas purple for cat food and cat
milk to proceed on the basis of the evidence submitted by Nestlé
that the colour had acquired distinctiveness through use. In the
UK, the Board stated that the relevant factors it took into account
were the market share; the extent, intensiveness and duration of
use; the level of advertising investment and level of recognition
among the relevant public. Harmoniously, the Australian Federal
Court reached the same conclusion, albeit for slightly different
reasons, finding that the evidence convincing that the colour was
genuinely used as a trade mark.
Analysis
As far as olfactory/gustatory marks are concerned, unless an
odour or taste can be graphically represented by reference to an
accepted standard of classification for odorants (as with colour),
it is likely that new registrations of these types of marks will be
impossible. But perhaps in reality this is no great loss as it is
rare that a company would use scents/tastes as a badge of
origin?
Sounds, on the other hand now seem fairly easy to register,
especially now that it is possible to lodge sound files in support
of a CTM application. Nevertheless, the IPO have advised that it
will be more difficult to get a registration for just a few notes
of music or songs which are commonly used in respect of the goods
or services covered by the application without evidence of
distinctiveness.
Applicants interested in registering shapes should bear in mind
that in order to get trademark protection for a category A or B
shape, they need to create a design that differs from the norm so
that the average consumer for that type of product would perceive
it as an indication of origin. However, if it is not possible to
achieve trademark protection for a shape, all is not lost.
Applicants could follow Dyson’s example and also, or instead, apply
for the shape (a transparent vacuum cleaner collecting bin) to be
registered as a design.
Regarding colours, the most important point to bear in mind is
that colours are normally only registerable if the applicant can
prove that the colour has acquired distinctiveness through. The UK
Whiskas case referred to above illustrates the type of evidence
required. Also, IKEA’s application (R799/2004-1) and the recent
case of Andreas Stihl AG & Co KG v OHIM, R 355/2007-4 give
guidance on the percentage of relevant consumers that need to
recognise the colour as an indication of origin: 42-45% being too
low and 72% being what the OHIM Board of Appeal thought was the
maximum reasonably achievable in a survey. OHIM also commented in
the IKEA case that such evidence should have been submitted from
more than three countries as IKEA’s goods/services are offered in
every member state. It also criticised IKEA’s survey as being too
biased and the statements attributed by trade circles as being
irrelevant as the relevant public were end consumers.
This article was first published in Intellectual
Property Magazine