PROTECTION OF SENSORY MARKS AND THE POSSIBLE
IMPACT OF THE GRAPHIC REPRESENTATION REQUIREMENT
REMOVAL ON THEIR REGISTRABILITY
by
Katarína Jelenčiaková
Master’s Thesis
presented to Council of the Faculty of Law of the University of Helsinki
in Candidacy for the Degree of the
Master of International and Comparative Law
University of Helsinki
Faculty of Law
August 2015
Tiedekunta/Osasto - Fakultet/Sektion – Faculty
Faculty of Law
Laitos - Institution – Department
Commercial Law
Tekijä - Författare – Author
Katarína Jelenčiaková
Työn nimi - Arbetets titel – Title
Protection of Sensory Marks and the Possible Impact of the Graphic Representation Requirement Removal on their
Registrability
Oppiaine - Läroämne – Subject
Intellectual Property Law
Työn laji - Arbetets art –
Aika - Datum – Month and year
Level
Master’s Thesis
August 2015
Tiivistelmä - Referat – Abstract
Sivumäärä - Sidoantal – Number of pages
xx+75
The thesis discusses the trade mark protection of scents, colours, sounds, touch and tastes. Commercial use of human
senses as brands allows the traders to benefit from their stimuli on consumers. Since the technological progress allows the
traders to use the senses as conveyors of their business ideas a demand for trade mark protection of sensory marks has
formed. Prior to satisfying the demand on the side of proprietors, the lawmakers have to take into account the interests of
the competitors and consumers as well. Therefore, the legislative solutions have to bear in mind and balance between all
three positions and ensure free competition and prevent protection of such marks that give unjustified advantage to one
entrepreneur. Moreover, the trade mark protection of senses gives rise to many discussions questioning their eligibility of
being graphically representable or having a distinctive character. The EU legislation does not expressly exclude trade mark
protection of sensory marks, but the case law hints that the registration is not granted without a (not always successful)
struggle.
The hypothesis was formulated as follows: Sensory marks in general can enjoy the same trade mark protection in the EU as
other more traditional trade marks pursuant to fulfilment of the strict registration criteria. However, for some of the sensory
marks – scent, touch and taste marks the requirements imposed by the current EU legislation and case law represent an
insurmountable obstacle. The proposed reform of the EU legislation can facilitate the registration of the sensory marks to a
certain extent, but it will not eliminate all the issues the respective sensory mark has to overcome. The research questions
that were discussed in the thesis are the following: (i) Are sensory marks protectable under EU law? (a) Are they
registrable? (b) What are the issues? (ii) Is having a requirement of graphic representation hindering the registration of
sensory marks?
The thesis is divided into six main chapters, where the first focuses on what can be protected as the as a trade mark on the
EU level (CTM) and across the Member States. The chapter further discusses the exclusive character and functions of trade
marks and potential US influence alongside with general issues relating to registering sensory marks in the USA and in the
EU. Each of the remaining five chapters focuses on a type of mark, which can be perceived by using one of five human
senses – scent, sight, hearing, taste and touch. Each of the ‘sense chapters’ encompasses an overview of the legislation
and most important case law in the field of trade mark law relating to registration of the respective sense. Special attention is
being paid to EU and US legislation and case law relating to registration of the respective sense at OHIM, USPTO and
national register authorities. In the following subchapters, the attention is drawn to the practical issues arising from the
endeavour to protect sensory marks and registration thereof. The focus is aimed on the main issues the applicant has to
overcome when claiming trade mark registration of a sensory mark resulting from the requirements of law and the nature of
the respective sense. Subsequently, each ‘sense chapter’ further elaborates how the proposed changes in the EU
legislation could affect registrability and protection of the respective sensory mark in the EU. The focal aim is to assess the
potential impact of the proposed abandonment of the graphic representation requirement on the registration process and
popularity of sensory marks applications. The last chapter is dedicated for conclusions summarizing whether sensory marks
are protectable in the EU, whether the trade mark reform would affect their position and whether the reform would in fact
mean converging of the EU and US approaches on the matter.
Avainsanat – Nyckelord – Keywords
graphic representation, trade mark, colour, scent, sound, taste, touch, sensory marks, registration, OHIM, inherent
distinctiveness, acquired distinctiveness, secondary meaning, functionality
Säilytyspaikka – Förvaringställe – Where deposited
Muita tietoja – Övriga uppgifter – Additional information
i
Contents
Bibliography .......................................................................................................................... v
List of Abbreviations .......................................................................................................... xix
1
2
Introduction ................................................................................................................... 1
1.1
Topic and research questions .................................................................................. 1
1.2
Structure of the thesis ............................................................................................. 3
1.3
Methodology of the thesis....................................................................................... 4
1.3.1
Legal dogmatics ............................................................................................... 4
1.3.2
Comparative approach ..................................................................................... 5
What can be protected as a trade mark under EU law? ................................................. 6
2.1
Sign ......................................................................................................................... 8
2.2
Graphic representation and proposal of its removal under the revised CTMR and
TMD ................................................................................................................................ 9
2.2.1
De lege lata ...................................................................................................... 9
2.2.2
De lege ferenda .............................................................................................. 10
2.3
Capability to distinguish goods or services of one undertaking from those of other
undertakings .................................................................................................................... 13
2.4
Exclusive nature of the trade mark right and trade mark functions ...................... 15
2.5
The potential US influence and general matters relating to registrability of
sensory marks in the EU and in the USA ........................................................................ 17
3
2.5.1
Functionality and aesthetic functionality ....................................................... 18
2.5.2
Secondary meaning........................................................................................ 19
2.5.3
Dilution protection and generic marks .......................................................... 20
2.5.4
Depletion ....................................................................................................... 20
2.5.5
Sieckmann Seven ........................................................................................... 21
Scents ........................................................................................................................... 22
ii
3.1
Overview of current legislation and important case law concerning registration of
scent marks ...................................................................................................................... 22
3.1.1
International framework ................................................................................ 22
3.1.2
EU regulation and case law ........................................................................... 23
3.1.3
US regulation and case law ........................................................................... 25
3.2
Practical issues arising from registering scents as trade marks ............................ 27
3.3
Will the proposed abandonment of the graphic representation affect the
registrability of scent marks? ........................................................................................... 29
4
Colours ........................................................................................................................ 32
4.1
Overview of current legislation and important case law concerning registration of
colour marks .................................................................................................................... 32
4.1.1
International regulation.................................................................................. 32
4.1.2
EU regulation and case law ........................................................................... 33
4.1.3
Examples of registrations of colour marks in Member States ....................... 35
4.1.4
US regulation and case law ........................................................................... 38
4.2
Practical issues arising from registering colours as trade marks .......................... 40
4.3
Will the proposed abandonment of the graphic representation affect the
registration of colour marks? ........................................................................................... 45
5
Sounds ......................................................................................................................... 47
5.1
Overview of current legislation and important case law concerning registration of
sound marks ..................................................................................................................... 47
5.1.1
International regulation.................................................................................. 47
5.1.2
EU regulation and case law ........................................................................... 48
5.1.3
US regulation and case law ........................................................................... 50
5.2
Practical issues arising from registering sounds as trade marks ........................... 53
5.3
Will the proposed abandonment of the graphic representation affect the
registration of sound marks?............................................................................................ 56
6
Touch ........................................................................................................................... 58
iii
6.1
Overview of the current legislation and important case law relating to registration
of tactile marks ................................................................................................................ 58
6.1.1
International regulation.................................................................................. 58
6.1.2
EU regulation and case law ........................................................................... 59
6.1.3
US regulation and case law ........................................................................... 60
6.2
Practical issues relating to registration of tactile marks and the possible effect of
abandonment of the graphic representation requirement on their registration ................ 62
7
Taste ............................................................................................................................ 65
7.1
Overview of the current legislation and important case law relating to taste mark
registration ....................................................................................................................... 65
7.1.1
EU regulation and case law ........................................................................... 65
7.1.2
US regulation and case law ........................................................................... 66
7.2
Practical issues relating to registration of taste marks and the possible effect of
abandonment of the graphic representation requirement on their registration ................ 68
8
Conclusion ................................................................................................................... 71
8.1
Protection of sensory marks under the current EU regulation .............................. 71
8.2
Possible convergence of EU and US paths ........................................................... 72
8.3
Impact of the proposed removal of graphic representation requirement on the
registrability of sensory marks in the EU ........................................................................ 73
iv
Bibliography
Books
Bainbridge, D., Intellectual Property, 8th edition, Longman Pub Group, 2010
Bently, L., Sherman, B., Intellectual Property Law, 4th edition, Oxford University Press,
2014
Gervais, D., The TRIPS Agreement: Drafting History and Analysis, 2nd edition, London:
Sweet & Maxwell, 2003
Jehoram, T., et al., European Trademark Law: Community Trademark Law and
Harmonized National Trademark Law, Kluwer Law International, 2010
Kitchin, D., et al., Kerly's Law of Trade Marks and Trade Names, 14th edition, London:
Sweet and Maxwell, 2005
Laurie, G., et al., Contemporary Intellectual Property: Law and Policy, 3rd edition, Oxford
University Press, 2013
Norman, H., Intellectual Property Law Directions, 2nd edition, Oxford University Press,
2014
Tritton, G., et al., Tritton on Intellectual Property in Europe, 4th edition, London: Sweet
and Maxwell, 2014
Articles
Ahuja, V. K., Non-traditional Trade Marks: New Dimension of Trade Mark Law,
European Intellectual Property Review, 32(11), 2010, pp. 575-581
Burrel, R., Handler, M., Making Sense of Trade Mark Law, Intellectual Property Quarterly,
Issue 4, 2003, pp. 388-410
Caldarola, M. C., Questions relating to abstract colour trade marks: recent developments
in Germany, European Intellectual Property Review, 25(6), 2003, pp. 248-255
v
Compton, A., Acquiring a Flavor For Trademarks: There's No Common Taste in the
World, Northwestern Journal of Technology & Intellectual Property, Volume 8 Issue 3,
2010, pp. 340 - 359
Gabrielides, J., Williams, T., The Sound of Unconventional Marks in the United States,
World Trademark Review, July/August 2007, pp. 94-95
Hirsch, M., Annual Review - The Thirteenth Annual International Review of Trademark
Jurisprudence: France, Trade Mark Reporter, Vol. 96 No. 2, March-April 2006, pp. 401410
Gilson, J., Gilson LaLonde, A., Cinnamon Buns, Marching Ducks and Cherry-Scented
Racecar Exhaust: Protecting Nontraditional Trademarks, Trade Mark Reporter, Vol. 95,
2005, pp. 773-824
Gilson LaLonde, A., Gilson, J, Getting Real With Nontraditional Trademarks: What’s Next
After Red Oven Knobs, the Sound of Burning Methamphetamine, and Goats on a Grass
Roof?, The Trade Mark Reporter, 100th Anniversary Issue, Vol. 101, January-February
2011, pp. 186-218
Hernandez-Marti Perez, C., The Possibility of IP Protection for Smell, European
Intellectual Property Review, 36(10), 2014, pp. 665-674
Knaak, R., Venohr, P., Study on the Overall Functioning of the European Trade Mark
System, Max Planck Institute for Intellectual Property and Competition Law, Munich, 2011
(the Max Planck Study)
Kur, A., Strategic Branding: Does Trademark Law Provide for Sufficient Self Help and
Self Healing Forces?, In Govaere, I, Ullrich, H. (eds.): Intellectual Property, Market
Power and the Public Interest, P.I.E. Peter Lang, 2008, pp. 191-217
Mackie, V., Scent Marks the Future of Canadian Trade-mark Law, Intellectual Property
Journal, 18 I.P.J. 417, 2005, pp. 31-64
vi
Reimer, E., A Semiotic Analysis: Developing a New Standard for Scent Marks, Vanderbilt
Journal of Entertainment and Technology Law, Volume 14 Issue 3, Spring 2012, pp.693728
Roth, M., Something Old, Something New, Something Borrowed, Something Blue: A New
Tradition in Nontraditional Trademark Registrations, 27 Cardozo Law Review 457 20052006, October 2005, pp. 457-495
Senftleben, M., Function Theory and International Exhaustion – Why it is Wise to Confine
the Double Identity Rule to Cases Affecting the Origin Function, European Intellectual
Property Review, 36(8), 2014, pp. 518-524.
Vidackovic, V., Christian Louboutin v. Yves Saint Laurent: “Trademark Use” Stomps its
Red Heels on “Likelihood of Confusion”, DePaul Journal of Art, Technology &
Intellectual Property Law, Volume 23 Issue 2, March 2013, pp. 463-482
Winckel, E., Hardly a black-and-white matter: Analyzing the validity and protection of
single-color trademarks within the fashion industry, Vanderbilt Law Review, Volume 66
Number 3, April 2013, pp. 1015-1042
Weber, N., Viefhues, M..,The Tradition of Non-traditional Trademarks in Germany, World
Trademark Review, July/August 2007, p. 88-89
Online articles
Alén-Savikko, A., Conflict Between Freedom of Expression And Trademark – Reality Or
Fiction?,
IPRinfo,
IPR
University
Center,
March
2015,
available
at:
www.iprinfo.com/verkkolehti/kaikki_artikkelit/2015/1_2015/fi_FI/conflict_between_freed
om_of_expression_and_trademark_reality_or_fiction/ (visited on 20.8.2015)
Anderson, C., Baseer, N., Jones, P., Strategic Intellectual Property Protection in Franchise
Systems: Beyond Trademark Registration, American Bar Association, 37th Annual Forum
on
Franchising,
Seattle,
2014,
pp.
1-55,
available
at:
http://www.americanbar.org/content/dam/aba/administrative/franchising/materials2014/w2
4.authcheckdam.pdf (visited on 22.7.2015)
vii
Baird, S., Touch Trademarks and Tactile Brands With Mojo: Feeling the Strength of a
Velvet,
Turgid,
Touch
Mark?,
July
2009,
available
at:
http://www.duetsblog.com/2009/07/articles/trademarks/touch-trademarks-and-tactilebrands-with-mojo-feeling-the-strength-of-a-velvet-turgid-touch-mark/
(visited
on
9.8.2015)
Browcott, O., Cadbury's Attempt to Trademark Dairy Milk Purple Blocked, 2013, available
at:
http://www.theguardian.com/business/2013/oct/04/cadbury-dairy-milk-purple-
trademark-blocked (visited on 13.7.2015)
Callil, J., Meet Pantone, The Company That Owns Almost Every Colour You Can Imagine,
2014, available at: http://junkee.com/meet-pantone-the-company-that-owns-almost-everycolour-you-can-imagine/46819 (visited on 28.7.2015)
Devaney, M., The Future for European Non-traditional Trade Marks, Intellectual Property
Magazine,
Gill
Jennings
&
Every
LLP,
June
2011,
available
at:
http://www.gje.com/Pub_docs/IPM-June_2011_Feat.pdf (visited on 24.7.2015)
Dreyfus & associés, USA: Requests for Scent-based Trademarks – Rejection of
“Distinctive Flavor of Peppermint” and “a Peppermint Scent” for Medicinal Products,
2014,
available
at:
http://www.dreyfus.fr/en/trademarks/usa-requests-for-scent-based-
trademarks-rejection-of-distinctive-flavor-of-peppermint-and-a-peppermint-scent-formedicinal-products/ (visited on 19.7.2015)
Gérard, A., The Proposal to Delete the Requirement of Graphical Representation of a
Trade Mark Registered in the European Union, IPcopy, January 2014, available at:
https://ipcopy.wordpress.com/2014/01/24/the-proposal-to-delete-the-requirement-ofgraphical-representation-of-a-trade-mark-registered-in-the-european-union/
(visited
on
17.7.2015)
Hodson, H., Smell-o-vision Screens Let You Really Smell the Coffee, New Scientist, March
2013, available at: https://www.newscientist.com/article/mg21729105-900-smell-o-visionscreens-let-you-really-smell-the-coffee/ (visited on 3.8.2015)
Humphreys, G., A Selective Review of Colour Mark Issues and Case Law in the EU,
Fordham IP Conference, 2013, available at: http://fordhamipconference.com/wpcontent/uploads/2013/03/2013.humphries.design.paper_.pdf (visited on 22.7.2015)
viii
Londesborough, S., Should Colours be protected by trade mark law? What problems may
arise in Protecting them?, University of Kent, Research dissertation 2004-2005, available
at http://www.kent.ac.uk/law/ip/resources/ip_dissertations/200405/Samuel_Londesborough_IP_Dissertation.doc (visited on 27.3.2015)
Mezulanik, E., The Status of Scents as Trademarks: An International Perspective, INTA
Bulletin,
Vol.
67
No.
1,
1
January
2012,
available
at:
http://www.inta.org/INTABulletin/Pages/TheStatusofScentsasTrademarksAnInternationalP
erspective.aspx (visited on 27.8.2015)
Monteiro, Ch., A Nontraditional Per-Spectrum: The Touch of Trademarks, INTA Bulletin,
Vol.
65
No.
11,
June
2010,
available
http://www.inta.org/INTABulletin/Pages/ANontraditionalPerSpectrum.aspx
(visited
at:
on
15.8.2015)
Neuberger Weller, S., When Can You Claim a Color as Your Trademark?, Mintz, Levin,
Cohn,
Ferris,
Glovsky
and
Popeo,
P.C.,
September
2012,
available
at:
http://www.mintz.com/newsletter/2012/Advisories/2243-0912-NAT-IP/index.html (visited
on 27.3.2015)
Prettyman, G., Should product features of touch, smell or taste be eligible for trademark?,
July 2009, available at: http://grpblawg.blogspot.fi/2009_07_01_archive.html (visited on
12.8.2015)
RGC Jenkins & Co, Viva la Difference? Well, Not Always., News & Publications,
European
Perspectives,
2013,
available
at:
http://www.jenkins.eu/news-and-
publications/archive/make-your-mark-spring-2013/2viva-la-difference-well-not-always/
(visited on 20.8.2015)
Ruiz-Astudillo, M., World’s First Texture Trademark Registered in Ecuador, INTA
Bulletin,
Vol.
59
No.
23,
2004,
available
at:
http://www.inta.org/INTABulletin/Pages/World%E2%80%99sFirstTextureTrademarkRegi
steredinEcuador.aspx (visited on 2.8.2015)
Schaal, C., The Registration of Smell Trademarks in Europe: another EU Harmonisation
Challenge, LEX e-SCRIPTA Online Legal Journal, Inter-Lawyer, available at:
ix
http://www.inter-lawyer.com/lex-e-scripta/articles/trademarks-registration-smellEU.htm#_ftn33 (visited on 3.8.2015)
Sweeney,
D.,
Can
You
Trademark
a
Sound?,
2014,
available
at:
http://www.huffingtonpost.com/deborah-sweeney/can-you-trademark-asound_b_5635571.html (visited on 28.7.2015)
Traub, F., German Federal Supreme Court decides on registrability of tactile marks (Case
I ZB 73/05 – Tastmarke/Tactile Mark), The Bardehle Pagenberg IP Report, Patent- und
Rechtsanwälte
Bardehle
Pagenberg,
2007,
pp.
9
-
10
available
at:
http://www.bardehle.com/uploads/files/IP_Report_2007_II.pdf (visited on 10.8.2015)
Trillet, G., Registrability of Smells, Colors and Sounds: How to Overcome the Challenges
Dressed by the Requirements of Graphical Representation and Distinctiveness within
European
Union
Law,
ECTA,
2013,
available
at:
http://www.ecta.org/IMG/pdf/garry_trillet__registrability_of_smells_colors_and_sounds.pdf (visited on 23.7.2015)
Wainwright, O., Meet Minion Yellow by Pantone: the world's first character-branded
colour,
July
2015,
available
at:
http://www.theguardian.com/artanddesign/2015/jul/16/meet-minion-yellow-by-pantonethe-worlds-first-character-branded-colour?CMP=share_btn_fb (visited on 28.7.2015)
Weiss, M., Happy to Deliver To You This Trade Mark Infringement in Pizza Flavor Case,
IPKat, October 2014, available at: http://ipkitten.blogspot.sk/2014/10/happy-to-deliver-toyou-this-trade-mark.html (visited on 12.8.2015)
Welch, J., Citable No. 34: TTAB Affirms Refusal of Flavor as a Mark for Pills on Grounds
of Functionality and Failure To Function, The TTABlog, June 2006, available at:
http://thettablog.blogspot.fi/2006/06/citable-no-34-ttab-affirms-refusal-of.html (visited on
13.8.2015)
Websites
ACS
Publications,
Industrial
&
Engineering
Chemistry
Research
http://pubs.acs.org/doi/abs/10.1021/ie403968w (visited on 3.8.2015)
x
Case Law of EU http://www.caselawofeu.com/initiation-of-precedential-system-in-dacosta-case/ (visited on 31.7.2015)
Industrial Property Office of the Slovak Republic (Úrad priemyselného vlastníctva
Slovenskej republiky) http://www.upv.sk/?trademarks (visited on 13.7.2015)
Trademark Dilution, available at:
http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkDilution.aspx (visited
on 21.8.2015)
The Pantone Matching System, available at: https://www.pantone.com/the-pantonematching-system (visited on 2.8.2015)
Trademarkology (by Stites & Harbison, PLC) available at:
http://www.trademarkologist.com/2014/03/adventures-in-trademarking-a-sound-the-oldspice-whistle/ (visited on 29.7.2015)
http://www.trademarkologist.com/2015/01/ducking-it-out-in-philadelphia/ (visited on
1.8.2015)
United States Patent and Trademark Office, available at:
http://www.uspto.gov/trademark/soundmarks/trademark-sound-mark-examples (visited on
27.7.2015)
International Trademark Association (INTA):
Review of the European Union Trademark System, available at:
http://www.inta.org/Advocacy/Pages/EuropeanUnionTrademarkSystem.aspx (visited on
18.8.2015)
Protectability of Color Trademarks, Board Resolutions, available at
http://www.inta.org/Advocacy/Pages/ProtectabilityofColorTrademarks.aspx (visited on
22.7.2015)
Protectability of Sound Trademarks, Board Resolutions, available at:
http://www.inta.org/Advocacy/Pages/ProtectabilityofSoundTrademarks.aspx (visited on
24.7.2015)
xi
Protectability of Touch Marks, available at:
http://www.inta.org/Advocacy/Pages/ProctectabilityofTouchMarks.aspx (visited on
5.8.2015)
World Intellectual Property Organization (WIPO):
http://www.wipo.int/ (visited on 13.7.2015)
http://www.wipo.int/export/sites/www/sct/en/comments/pdf/sct17/au_1.pdf (visited on
20.7.2015)
WIPO magazine, February 2009
http://www.wipo.int/wipo_magazine/en/2009/01/article_0003.html (visited on 12.8.2015)
International treaties and US legislation
Lanham Trade-Mark Act of 1946, 50 Stat. 427 (Jul. 5, 1946), codified, as amended, at 15
U.S.C. 1051 et seq.
Singapore Treaty on the Law of Trademarks, 2006 (WIPO)
Regulations under the Singapore treaty on the law of trademarks, 2011 (WIPO)
Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), 1994
(WTO) available at: http://www.wto.org/english/docs_e/legal_e/27-trips.pdf (visited on
22.7.2015)
EU legislation and proposals
Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008
to approximate the laws of the Member States relating to trade marks
Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark
Commission, Proposal for a Regulation of the European Parliament and of the Council
amending Council Regulation (EC) No 207/2009 on the Community trade mark,
2013/0088 (COD), 27 March 2013 [original draft and explanatory memorandum]
Commission, Proposal for a Regulation of the European Parliament and of the Council
amending Council Regulation (EC) No 207/2009 on the Community trade mark,
xii
2013/0088
(COD),
27
March
2013,
[final
compromise
draft]
available
http://data.consilium.europa.eu/doc/document/ST-9547-2015-ADD-1/en/pdf
at:
(visited
19.8.2015)
Commission, Proposal for a Directive of the European Parliament and of the Council to
approximate the laws of the Member States relating to trade marks, 2013/0089 (COD), 27
March 2013 [original draft and explanatory memorandum]
Commission, Proposal for a Directive of the European Parliament and of the Council to
approximate the laws of the Member States relating to trade marks, 2013/0089 (COD), 27
March
2013,
[final
compromise
draft]
available
http://data.consilium.europa.eu/doc/document/ST-9547-2015-ADD-2/en/pdf
at:
(visited
19.8.2015)
EU materials and opinions
Opinion of Advocate General M. D. Ruiz-Jarabo Colomer [2001] in Case C-273/00
Sieckmann v Deutsches Patent- und Markenamt [2003]
Opinion of Advocate General Ruiz-Jarabo Colomer [2003] in Case C-283/01 Shield Mark
BV v Joost Kist [2004]
Council of the European Union, Trade marks reform: Council confirms agreement with
Parliament,
available
at:
http://www.consilium.europa.eu/en/press/press-
releases/2015/06/10-div-trade-marks/ (visited on 18.8.2015)
European Commission:
Press release, Trade marks: Commission proposes easier access and more effective
protection, http://europa.eu/rapid/press-release_IP-13-287_en.htm?locale=en (visited on
13.7.2015)
Memo, Modernisation of the European Trade Mark System – Frequently Asked Questions,
http://europa.eu/rapid/press-release_MEMO-13-291_en.htm?locale=en (visited on
14.7.2015)
xiii
Memo, Package to modernise the European Trade Mark System – Frequently Asked
Questions,
http://europa.eu/rapid/press-release_MEMO-15-4824_en.htm
(visited
on
15.7.2015)
Case law
CJEU (ECJ):
Case C-206/01 Arsenal Football Club plc v Matthew Reed Case [2003] ETMR 227
Cases
28–30/62
Da
Costa
en
Schaake
N.V.
and
others
v
Nederlandse
Belastingadministratie [1963] ECR 31
Case C-321/03 Dyson Ltd v Registrar of Trade Marks [2007] ETMR 34
Case C-49/02 Heidelberger Bauchemie GmbH [2004] ETMR 99
Case C-447/02 KWS Saat AG v OHIM [2004] ECR I-10107
Case C-487/07 L’Oréal v Bellure [2009] ETMR 987
Case C-145/05 Levi Strauss & Co v Casucci SpA [2006]
Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2004] Ch 83, [2004] 2 WLR
1081
Case C-553/11 Bernhard Rintisch v Klaus Eder [2012] WLR (D) 289
Case C-273/00 Sieckmann v Deutsches Patent- und Markenamt [2003] Ch 487, [2003] 3
WLR 424
Case C-283/01 Shield Mark BV v Joost Kist h.o.d.n. Memex [2004] Ch 97, [2004] RPC 315
General Court of the EU:
Case T-305/04 Eden SARL v OHIM [2003] ECR II-4705
Case T-363/08 2nine Ltd v Office for Harmonisation in the Internal Market [2010] ECR II00036
xiv
Case T-108/08 Zino Davidoff SA v Office for Harmonisation in the Internal Market [2011]
ECR II-05585
Germany:
BGH [1999] G.R.U.R. Farbmarke gelb/Schwarz
BGH [2007] G.R.U.R. I ZB 73/05 – Tastmarke/Tactile Mark
The Federal Patent Court [2005] (28 W (pat) 228/03)
France
Eli Lilly and Co. v. INPI, Court of Appeal of Paris, 4th Chamber, October 3, 2003, Dalloz,
Vol. 184 (2004), No. 33
United Kingdom:
Société Des Produits Nestlé S.A. v. Cadbury UK Ltd [2012] EWHC 2637 (Ch) (01 October
2012)
USA:
Acacia Inc. v. Neomed Inc., Case No. 8:11-cv-01329-JST-AN, C.D.Cal. 7/23/12
EMI Catalogue P’ship v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56 (2d Cir.
2000)
GML Inc v Mayhew, 188 F Supp 2d 891 (MD Tenn 2002)
Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., Docket No. 11-3303-cv (2d
Cir. September 5, 2012)
Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850, n. 10
Kellogg Co. v. Nat'l Biscuit Co., 305 U.S. 111, 118 (1938)
New York Pizzeria, Inc. v. Syal et al, No. 3:2013cv00335 (2014)
In Re Owens-Corning Fiberglass Corp., 774 F.2d 1116 (1985)
xv
Oliveira v Frito-Lay Inc., 251 F3d 56 (2d Cir 2001)
Schwinn Bicycle Co. v. Murray Ohio Mfg. Co., 339 F. Supp. 973 (M.D. Tenn. 1971), aff'd,
470 F.2d 975 (6th Cir. 1972) 470 F.2d 975
Qualitex Co. v Jacobson Products Co, 514 U.S. 159 (1995)
T-Mobile US, Inc. v. Aio Wireless LLC, Case No. H-13-2478 (S.D. TX)
Decisions and case law of the Register Authorities
OHIM (EU):
Decision No. EX-05-3 of the President of the Office concerning electronic filing of sound
marks, 10 October 2005, available at http://oami.europa.eu/en/office/aspects/pdf/ex053.pdf (visited on 20.7.2015)
Eli Lilly/ The taste of artificial strawberry flavour, R120/2001-2 (4. Aug. 2003)
Appeal No. R0711/1999-3, OHIM Third Board of Appeal (5 Dec. 2001)
TTAB (USA):
In re Clarke, 17 U.S.P.Q.2d 1238 (T.T.A.B. 1990)
In re General Electric Broadcasting Co., 199 USPQ 560, 563 (T.T.A.B. 1978)
In re N.V. Organon, 79 U.S.P.Q.2d 1639 (T.T.A.B. 2006)
In re Pohl-Boskamp GmbH & Co. KG 106 U.S.P.Q.2d 1042 (T.T.A.B. 2013)
Trade mark registrations and applications
OHIM (EU):
CTM 000428870 (Oct. 11, 2000) [expired]
CTM 004901658 (Apr. 11, 2007)
CTM 000031336 (Oct. 27, 1999)
CTM 002510345 (June 17, 2004) [expired]
CTM 000212753 (Sept. 9, 2000)
CTM App. No. 001452853 (filed Jan.1,
2000, refused Mar. 2, 2004)
xvi
CTM 000747949 (Mar. 23, 2007)
CTM App. No. 003132404 (filed Apr. 14,
2003, refused Jan. 7, 2005)
USPTO (USA):
U.S. Reg. No. 4,113,191 (June 15, 2010)
U.S. Reg. No. 2,692,077 (March 4, 2013)
U.S. Reg. No. 3,849,102 (Nov. 12, 2009)
U.S. Reg. No. 2,519,203 (Dec. 18, 2001)
U.S. Reg. No. 3,332,910 (Nov. 22, 2004)
U.S. Reg. No. 2,607,415 (Aug. 13, 2002)
U.S. Reg. No. 3,140,701 (Sept. 5, 2006)
U.S. Reg. No. 2,484,276 (Sept. 4, 2001)
U.S. Reg. No. 3,140,700 (Sept. 5, 2006)
U.S. Reg. No. 2,751,476 (Aug. 12, 2003)
U.S. Reg. No. 3,143,735 (Sept. 12, 2006)
U.S. Reg. No. 3,896,100 (Dec. 28, 2010)
U.S. Reg. No. 3,140,694 (Sept. 5, 2006)
U.S. Reg. No. 3,155,702 (Oct. 7, 2006)
[cancelled May 24, 2013]
U.S. Reg. No.3,140,693 (Sept. 5, 2006)
U.S. App. Serial No. 74,485,223 (filed Feb.
1, 1994) [Application withdrawn]
U.S. Reg. No. 3,140,692 (Sept. 5, 2006)
U.S. App. Serial No. 85,007,641 (filed Apr.
6, 2010) [Application abandoned]
U.S. Reg. No. 0,916,522 (July 13, 1971)
U.S. App. Serial No. 85,007,428 (filed Apr.
6, 2010) [Application abandoned]
U.S. Reg. No. 1,395,550 (June 3, 1986)
Office Action of July 14, 2010 for U.S.
App. Serial No. 85,007,428
U.S. Reg. No. 2,210,506 (Dec. 15, 1998)
UK Intellectual Property Office:
UK Trade Mark No. 2001416
UK Trade Mark No. 2007456
UK Trade Mark No. 2000234
Application No. 2000169
(filed Oct. 31, 1994, refused Dec. 19, 2000)
German Patent and Trade Mark Office
Reg. No. DE30259811 (“UNDERBERG” tactile mark registration), available at:
http://www.copat.de/markenformen/Tactilemark.pdf (visited on 10.8.2015)
xvii
Industrial Property Office of the Slovak Republic (Úrad priemyselného vlastníctva):
OZ 230667 (O2 Holdings Limited, 2011), available at:
http://registre.indprop.gov.sk/registre/detail/popup.do?lang=en&register=oz&puv_id=2986
47
OZ 231887 (Deutsche Telekom AG, 2012), available at:
http://registre.indprop.gov.sk/registre/detail/popup.do?lang=en&register=oz&puv_id=2979
48
xviii
List of Abbreviations
CJEU, the Court
Court of Justice of the European Union (including its legal
predecessor European Court of Justice)
CTM
Community Trade Mark
CTMR
Council Regulation (EC) No 207/2009 of 26 February 2009
on the Community trade mark
CTMR Proposal
Commission, Proposal for a Regulation of the European
Parliament and of the Council amending Council Regulation
(EC) No 207/2009 on the Community trade mark, 2013/0088
(COD), 27 March 2013
EU
The European Union
INTA
International Trademark Association
IP
intellectual property
Max Planck Institute
Max Planck Institute for Intellectual Property and
Competition Law in Munich
Max Planck Study
Study on the Overall Functioning of the European Trade
Mark System
Member States
Member States of the European Union
OHIM
Office for Harmonization in the Internal Market
Proposals
CTMR Proposal and TMD Proposal
Sieckmann Seven
Seven criteria “clear, precise, self-contained, easily
accessible, intelligible, durable and objective” the CJEU
adopted in Case C-273/00 Sieckmann v Deutsches Patentund Markenamt [2003] for the representation of sign
Singapore Regulations
Regulations under the Singapore treaty on the law of
trademarks of 2011
Singapore Treaty
Singapore Treaty on the Law of Trademarks of March 2006
TMD
Directive 2008/95/EC of the European Parliament and of the
Council of 22 October 2008 to approximate the laws of the
Member States relating to trade marks
TMD Proposal
Commission, Proposal for a Directive of the European
Parliament and of the Council to approximate the laws of the
xix
Member States relating to trade marks, 2013/0089 (COD), 27
March 2013
TRIPS
Agreement on Trade-Related Aspects of Intellectual Property
Rights of 1994
TTAB
Trademark Trial and Appeal Board of the USPTO
UK
The United Kingdom of Great Britain and Northern 1Ireland
USA, US
The United States of America
USPTO
United States Patent and Trademark Office
WIPO
World Intellectual Property Organisation
WTO
World Trade Organisation
xx
1
Introduction
1.1
Topic and research questions
The endeavour trying to claim legal protection for scents, colours, sounds, touch
and tastes as trade marks mirrors the central dilemma of the whole intellectual property
regulation where on one side stand rights of creators, inventors, owners and investors and
on the other, rights of competitors and consumers. Commercial use of human senses as
brands allows the traders to benefit from their stimuli on consumers. The technological
progress allows the traders to use the senses as conveyors of their business ideas. Sensory
marks therefore serve as a recognizing factor and the rights of the owner who invested in
the mark should enjoy trade mark protection. On the other hand, the perspective can be
shifted to lawmaker’s obligation to ensure free competition and prevent protection of such
marks that give unjustified advantage to one entrepreneur, which leads to limitations for
the other competitors and imposes obstacles for free trade.
Moreover, the trade mark protection of senses gives rise to many discussions
questioning their eligibility of being graphically representable, having a distinctive
character and also issues concerning morality such as 'owning a colour' or ‘owning a smell’
and an impact of such monopoly on the other actual or potential competitors.
The aim of searching for a balance in the struggle between owners and competitors
is reflected in the EU case law where the purpose of the TMD was expressed as “generally
to strike a balance between the interests of the proprietor of a trade mark to safeguard its
essential function, on the one hand, and the interests of economic operators in having signs
capable of denoting their products and services.”1 Alike as in general scope of IP law, also
in trade mark law, the essential tool for establishing and keeping a certain degree of fair
competition in a trade or industry, is balancing of these perspectives of protection of
sensory marks i.e. balancing of the rights and interests of both sides.
However, the world of intellectual property does not just spin around the struggle
between the proprietors and their competitors. As observed by Mrs Anette Kur, an ideal
world of trade marks should work on a tri-polar scheme where “every single issue of
1
C-145/05 Levi Strauss & Co v Casucci SpA [2006], para. 29.
1
relevance for the acquisition and extent of protection, an even balance has to be struck
between the positions of the right holder (or applicant), the buying public (consumers),
and that of the competitors (in abroad sense, incl. business at large).”2 Therefore, the
legislative solutions have to bear in mind all three positions, including the consumers, in
order to be sensible.3
The ways of balancing and measures taken to protect each side may differ from
country to country. Legislations of the Members States concerning trade mark law were
harmonized to a certain degree, but even though, the legislation on trade marks and
especially the case law filling in the gaps and setting a further direction of regulation can
still be quite diverse.
Therefore, my preliminary hypothesis is formulated as follows:
Sensory marks in general can enjoy the same trade mark protection in the EU as
other more traditional trade marks pursuant to fulfilment of the strict registration
criteria. However, for some of the sensory marks – scent, touch and taste marks the
requirements imposed by the current EU legislation and case law represent an
insurmountable obstacle. The proposed reform of the EU legislation can facilitate the
registration of the sensory marks to a certain extent, but it will not eliminate all the
issues the respective sensory mark has to overcome.
These are the following research questions, which are discussed first in general for all
the sensory marks together and then for each type of sensory mark separately in the respective
chapter of the thesis.
(i) Are sensory marks protectable under EU law?
(a) Are they registrable?
(b) What are the issues?
(ii) Is having a requirement of graphic representation hindering the registration of
sensory marks?
2
Kur, A., Strategic Branding: Does Trademark Law Provide for Sufficient Self Help and Self Healing
Forces?, p.195.
3
ibid.
2
(iii) Will the abandonment of the graphic representation criterion affect the registrability
of sensory marks?
1.2
Structure of the thesis
The thesis is divided into six main chapters, where the first focuses on what can be
protected as the as a trade mark on the EU level (CTM) and across the Member States. The
chapter further discusses the exclusive character and functions of trade marks and potential
US influence alongside with general issues relating to registering sensory marks in the
USA and in the EU. Each of the remaining five chapters focuses on a type of mark, which
can be perceived by using one of five human senses – scent, sight, hearing, taste and touch.
Each of the ‘sense chapters’ encompasses an overview of the legislation and most
important case law in the field of trade mark law relating to registration of the respective
sense. Special attention is being paid to EU and US legislation and case law relating to
registration of the respective sense at OHIM, USPTO and national register authorities. Due
to the limited scope of this paper, the paper will deal with protection of senses as an
inherent part of the signs, words, pictures or logos only to a very limited extent.
In the following subchapters, the attention is drawn to the practical issues arising
from the endeavour to protect sensory marks and registration thereof. The focus is aimed
on the main issues the applicant has to overcome when claiming trade mark registration of
a sensory mark resulting from the requirements of law and the nature of the respective
sense.
Subsequently, each ‘sense chapter’ further elaborates how the proposed changes in
the EU legislation could affect registrability and protection of the respective sensory mark
in the EU. The focal aim is to assess the potential impact of the proposed abandonment of
the graphic representation requirement on the registration process and popularity of
sensory marks applications.
The last chapter is dedicated for conclusions summarizing whether sensory marks
are protectable in the EU, whether the trade mark reform would affect their position and
whether the reform would mean converging of the EU and US approaches on the matter.
3
1.3
Methodology of the thesis
1.3.1 Legal dogmatics
One of the methodologies used for the thesis research is legal dogmatics. The research
was focused on the EU normative system and analysis of legal texts with an aim to interpret
their content. From the legal dogmatics methodology the primary point of the thesis was to
elaborate what can be protected as a trade mark under the EU legislative instruments, the
CJEU case law and the case law and solutions applied by OHIM. National case law of the
Member States was used to show the national registers’ and/or courts’ consistency with or
possible declinations from the OHIM’s and CJEU’s approach towards sensory marks
registration.
The intention was to focus on the (i) wording of the EU legislative instruments – the
CTMR and the TMD, (ii) case law of the CJEU (iii) case law and solutions applied by OHIM,
(iv) revised drafts of the CTMR and TMD, and subsequently, for the following comparison of
the approaches, (v) wording of the US legislative instrument, the Lanham Act (vi) case law of
the US courts (vii) case law and solutions applied by USPTO. In addition, to wrap the
juxtaposition of the EU and US systems in the international context, an international regulatory
framework dealing with the respective type of the sensory mark was used for the contextual
illustration.
Firstly, wording of the legislative instruments of the EU and the US regulating the
sensory mark protection was the primary source for the following comparison of the two legal
systems.
Secondly, the core of the comparison stemmed from the practical approach of both
systems i.e. the courts’ and register authorities’ practice dealing with registration application
and, in some cases also subsequent infringement proceedings relating to sensory marks.
Therefore, the main attention was paid to the issues identified and potential solutions applied in
the courts’ and register authorities’ case law. It is important to underline the importance and
necessity of case law in the field of the whole IP law, a field being subject to such a quick
development of technologies where essential changes might happen on a daily basis, as a
crucial and essential tool of creating of law even in countries with civil law systems. Even
national case law from other countries, especially from the USA, often serves as an
4
inspiration in judicial process or for further legislation in the EU and its Member States.
Because of this unavoidable link between the EU and the USA, the lack of sensory marks
protection specific EU case law and because of the fact that most of the case law in trade
mark law comes from the USA, the US case law is discussed in detail.
Thirdly, a significant portion of attention was paid to the forthcoming revision of EU
law in the field of trade mark law with special focus on the proposed abandonment of the
graphical representation criterion.
And fourthly, case law of the courts and register authorities of Member States dealing
with the particular sensory mark registration was used. Due to the limited scope of the thesis,
protection of trade marks acquired through use by national laws of the Member States was not
part of the research and the focus was given to trade marks applied-for registration.
1.3.2 Comparative approach
Another methodology tool used in the research of the thesis was the comparison of
two legal systems – legal system of the EU and that of the USA. Through the comparative
method two systems with different trade mark protection approach were analysed – the EU
system, which currently requires the graphic representation of each trade mark and the US
system, which does not require the graphic representation for signs that cannot be
perceived visually. The aim of the comparison is to show different approaches applied in
each of the systems towards sensory marks with bearing in mind the European
Commission’s proposals to amend the current system by removing the graphic
representation criterion, for which the US system can serve as valuable example and source
of inspiration. However, the comparative methodology used in the thesis has its own
specification. The comparison is done solely from the perspective of the EU and analyses
only solutions from the US trade mark environment that could inspire the EU regulation,
but not vice versa.
5
2
What can be protected as a trade mark under EU law?
Trade marks offer the public a possibility to distinguish between goods and services
of various trade origins. The consumers associate certain quality of goods or services with
a particular trade mark, which subsequently affects their choices and behaviour on the
market. This gives trade mark owners incentives to produce high-quality goods or services
under its trade marks. Therefore, trade marks serve to the benefit of both, proprietors and
consumers. Although a trade mark cannot be perceived as a legal guarantee of quality, the
economic incentive of the undertaking to produce a uniform high-quality production is
present if the quality of goods or services can be attributed to the undertaking.4
Provisions on registered trade marks have been the topic of EU case law more than
any other IP field. That has been the case not only because of the many questions
concerning trade marks that need to be settled, but also because of the economic value they
represent and subsequently, the importance of protection thereof.5
The European trade mark system consists of two parallel systems of protection,
which coexist alongside each other. The same sign can be registered at national level at the
industrial property offices of Member States as a national trade mark and/or at EU level as
a Community trade mark. The main advantage of the CTM system is that one single
registration grants owner exclusive rights across all 28 Member States. The body
empowered with the registration of CTMs is the Office for Harmonization in the Internal
Market residing in Alicante.6
The autonomous character of the CTM system was further clarified in 2nine7 as
having its own set of objectives and rules peculiar to it, which are applied independently of
any national system. Hence, the registrability of a sign as a CTM is to be assessed on the
grounds of the relevant legislation alone and neither the EU courts nor OHIM are bound by
decisions adopted in a Member State, but may take them into consideration.8 In Zino
Davidoff9 it was underlined that if OHIM is to base its decision on a national decision as
4
Tritton, G., et al., Tritton on Intellectual Property in Europe, pp. 355-356.
Laurie, G., et al., Contemporary Intellectual Property: Law and Policy, p. 548.
6
http://europa.eu/rapid/press-release_MEMO-13-291_en.htm?locale=en (visited on 14.7.2015).
7
Case T-363/08 2nine Ltd v Office for Harmonisation in the Internal Market [2010].
8
ibid, para 52.
9
Case T-108/08 Zino Davidoff SA v Office for Harmonisation in the Internal Market [2011].
5
6
a piece of evidence it is obliged to “examine with all the required care and in a diligent
manner whether that piece of evidence is such as to show the genuine use of an earlier
mark.”10
As explained by the Commission, the coexistence of the EU-wide and national
systems provides for “effective and efficient functioning of a trade mark regime that meets
the requirements of companies of different sizes, markets and geographical presence.”11
Even though small and middle-sized businesses are important users of the CTMs, they tend
to prefer national protection. Small and middle-sized businesses alongside with local
businesses often do not require EU-wide protection and national trade marks better fit their
needs. The CTM system is more suitable for businesses with activities on EU scale.
Moreover, because a trade mark has to be genuinely used in the relevant territory to enjoy
legal protection, national trade marks represent a crucial alternative to CTM.12
Moreover, the CTM system provides protection only for trade marks that has
acquired the rights by registration at OHIM.13 The Member States’ national law can offer
protection also for trade marks that have acquired rights through use.14 Therefore, national
trade mark systems continue to be an important alternative for those entrepreneurs which
for various reasons do not want to protect their trade marks at the EU level.15
The trade mark law in the European Union has been approximated by the Directive
2008/95/EC of the European Parliament and of the Council of 22 October 2008 to
approximate the laws of the Member States relating to trade marks (the TMD). The
TMD’s objective has been to ensure uniformity of the conditions applied by national
industrial offices of Member States when registering trade marks and their subsequent
protection. Rules concerning the Community trade mark were later imposed by the Council
Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (the
CTMR). The CTM represents the first EU-wide intellectual property system, which exists
10
Case T-108/08 Zino Davidoff SA v Office for Harmonisation in the Internal Market [2011], para 23.
http://europa.eu/rapid/press-release_MEMO-15-4824_en.htm (visited on 15.7.2015).
12
ibid.
13
CTMR, Recital 7; CTMR, Article 6.
14
TMD, Article 5.
15
CTMR, Article 1; CTMR, Recital 6.
11
7
alongside and is linked to national trade mark systems of the Member States.16 These two
instruments represent the framework for trade mark law protection in the European Union.
Pursuant to Article 4 CTMR: “A Community trade mark may consist of any signs
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.” Therefore, in order to be registered as CTM a mark must fulfil three
criteria:
1. the mark must be a sign;
2. the mark must be capable of being represented graphically; and
3. the mark must be capable of distinguishing goods or services of one undertaking
from those of another.
2.1
Sign
Signs represent a possibility to communicate various ideas, including the origin of
products or services, their brand image, and even their quality. Consumers respond to a
large variety of types of signs. Some prefer to stick with the classic ones consisting of
simple texts or numbers thanks to which they can for example easily orientate in the
supermarket to buy their preferred type of product. On the other hand, some consumers
respond to more creative signs, which are capable to attract their attention and even
convince them to simply try another product, because of the catching trade mark. The more
unusual and non-conventional the mark is, the more curiosity it creates in the spectrum of
consumers. Can the origin of the goods or services be perceived through all our senses?
Traditional trade marks attract consumers’ attention through sight, whereas the new
generation of trade marks tries to attract the consumers to products through all their senses.
Thanks to the technological development, it is nowadays possible in a number of
states to use even non-traditional trade marks as a protection of the origin of goods or
services. Non-traditional trade marks such as olfactory marks, taste marks, moving images,
holograms, feel marks, three-dimensional marks and also colour marks can be perceived as
16
http://europa.eu/rapid/press-release_MEMO-13-291_en.htm?locale=en (visited on 14.7.2015).
8
a new generation of trade marks enabling their owners to protect their products and
services in new and non-conventional ways.17
The argumentation behind registrability of the new non-conventional trade marks
lies in the fact that the CTMR does not expressis verbis reject registration of nonconventional signs as trade marks. Even though they are not mentioned as types in
Article 4 CTMR, the list of examples provided in the article is not exhaustive.
Although many signs have been accepted by OHIM or national Member States’
registries to meet the criteria of being a trade mark, the CJEU in Dyson18 stated that the
sign has to be specific enough for the consumer to identify the subject matter of the
application itself. The CJEU ruled in the case at hand that the sign was expressed in
general and abstract manner and that the consumer would be able to identify the product
only from the attached graphic representations, which were only examples of the
application and did not represent the sign itself.19
As discussed in the following chapters, sensory marks are in general capable to
function as signs and are specific enough to be perceived as indicators of commercial
origin. Therefore the requirement of ‘being a sign’ does not in most cases represent an
obstacle standing in the way of their registration.
2.2
Graphic representation and proposal of its removal under the revised CTMR
and TMD
2.2.1 De lege lata
Pursuant to the current EU legislation, the trademarked sign has to be represented
graphically in order to enjoy protection resulting from the registration. As has been
explained by the CJEU in Heidelberg Bauchemie,20 the purpose of the graphic
representation requirement is a precise definition of the claimed mark in order to allow the
public and administration authorities determine what is exactly protected by the trade
17
Ahuja, V. K., Non-traditional Trade Marks: New Dimension of Trade Mark Law, p. 575.
Case C-321/03 Dyson Ltd v Registrar of Trade Marks [2007].
19
Laurie, G., et al., Contemporary Intellectual Property: Law and Policy, p. 580.
20
Case C-49/02 Heidelberger Bauchemie GmbH [2004].
18
9
mark. The authorities are thus able to examine the application and maintain a register of
trade marks allowing both the competitors and consumers to know precisely the subject of
the claimed trade marks and the adjacent rights of their owners.21
Therefore, by virtue of the current CTM definition laid down in the
Article 4 CTMR, the requirement of graphical representation appears as crucial defining
element of the CTM concept. Yet, as noted by the Max Planck Institute for Intellectual
Property and Competition Law in Munich (the Max Planck Institute) in their Study on the
Overall Functioning of the European Trade Mark System (the Max Planck Study) the
CTM definition gave rise to a misunderstanding regarding the coexistence of the EU and
national systems of protection. Signs that cannot be represented graphically could have
been deemed as non-valid under EU law in spite of being acquired under national law
without registration. To avoid such controversies, the authors of the Max Planck Study
recommended that “it should be made clear that, as important as graphical representation
may be, it is only of relevance in the framework of the registration system and does not
determine the protectability of marks as such.”22
2.2.2 De lege ferenda
The need for EU trade mark law modernisation has been crystallising since the end
of last decade. In 2009, the European Commission appointed the Max Planck Institute to
carry out the study “to assess the current state of play of the CTM system and the potential
for improvement and future development, and to evaluate the relationship between the
CTM and national systems including the need for further harmonization.”23 On the basis of
the Max Planck Study, the European Commission in 2013 formally adopted its proposals
to revise the CTMR and the TMD. Since then both CTMR and TMD proposals (the
Proposals) underwent several changes and some of the substantial suggestions from the
Max Planck Study were left out through time. The latest action regarding the Proposals
took place in June 2015 when the compromise draft texts of the Proposals were approved
by Council’s Permanent Representatives Committee and were published on the Council’s
21
Case C-49/02 Heidelberger Bauchemie GmbH [2004], para 28-30.
Knaak, R., Venohr, P., Study on the Overall Functioning of the European Trade Mark System, p. 67.
23
http://www.inta.org/Advocacy/Pages/EuropeanUnionTrademarkSystem.aspx (visited on 18.8.2015).
22
10
website.24 The final adoption by the Council and the European Parliament in plenary is
expected in autumn 2015.25
The Proposals follow the position expressed in the Max Planck Study, which
suggests that the requirement of graphical representation should be omitted from the
wording of the relevant provisions and preambles of the TMD and CTMR. The
abandonment of the criterion would allow and facilitate the development of new ways of
representation, which could be equally informative and reliable and in some cases, such as
sound marks, could provide even more information and certainty both for the competent
authorities maintaining the register and for the public. Nonetheless, the Max Planck Study
underlines that this should not anyhow diminish the level of legal security prescribed in
Sieckmann26 in relation to sensory marks.27
Preambles of the Proposals reveal that the primary reason to omit the graphic
representation requirement from the CTM and trade mark definition is to increase legal
certainty. While pursuing for more flexibility for the applicants a greater legal certainty
should be ensured considering the means of representation of trade marks. The Proposals
further argue that the prerequisite of graphic representation is outdated and does not
enhance legal certainty with respect to certain non-traditional marks. The authors of the
Proposals correctly reason that for some marks, especially non-visual marks,
“representation by other than graphical means (e.g. by a sound file) may even be
preferable to graphic representation, if it permits a more precise identification of the mark
and thereby serves the aim of enhanced legal certainty.”28 Therefore, the definition of the
European trade mark, being the proposed name for the revised CTM, should be without the
requirement of graphic representability. The representation of a sign should be permitted in
any appropriate form providing that “the representation enables the competent authorities
and the public to determine with precision and clarity the precise subject matter of
protection.”29
24
see http://www.consilium.europa.eu/en/press/press-releases/2015/06/10-div-trade-marks/ (visited on
18.8.2015).
25
http://www.inta.org/Advocacy/Pages/EuropeanUnionTrademarkSystem.aspx (visited on 18.8.2015).
26
Case C-273/00 Sieckmann v Deutsches Patent- und Markenamt [2003].
27
Knaak, R., Venohr, P., Study on the Overall Functioning of the European Trade Mark System, p.264.
28
CTMR Proposal [original draft and explanatory memorandum], Explanatory memorandum, p. 7 and TMD
Proposal [original draft and explanatory memorandum], Explanatory Memorandum, p.5.
29
CTMR Proposal [original draft and explanatory memorandum], p. 2.
11
The respective revised Article 4 CTMR should therefore read as follows:
“Article 4
Signs of which a European trade mark may consist
A European trade mark may consist of any signs, in particular words, including personal
names, designs, letters, numerals, colours as such, the shape of goods or of their
packaging, or sounds, provided that such signs are capable of
(a) distinguishing the goods or services of one undertaking from those of other
undertakings;
(b) being represented in a manner which enables the competent authorities and the public
to determine the precise subject of the protection afforded to its proprietor.”
The new definition of the European trade mark reflects the current situation and
competitiveness on the market where entrepreneurs strive to distinguish their products
and/or services from another using new technology, media and communication strategies.
In the heart of those innovative strategies is the use of new generation of marks appealing
to human senses – the sensory marks.30 However, the aim of the new definition is not to
allow an unlimited extension of admissible means of representation of the sign, but at the
same time, it leaves the door open for representation by new technological means, which
would offer a satisfactory guarantee of legal certainty.31 The Max Planck Study indicates
that various user associations are in favour of opening the system to other possibilities of
sign representation. One of them, International Trademark Association (INTA), also
stressed that there are inconsistencies between national registration offices and OHIM
when it comes to applying standards for registration and requirements for graphic
representation.32 That is another principal issue the Commission aims to rectify by
promoting convergence of their practices and the development of common tools.33
Uniformity of application together with boosting legal certainty are one of the central
tenets of the Proposals.
30
Gérard, A., The Proposal to Delete the Requirement of Graphical Representation of a Trade Mark
Registered in the European Union, available at https://ipcopy.wordpress.com/2014/01/24/the-proposal-todelete-the-requirement-of-graphical-representation-of-a-trade-mark-registered-in-the-european-union/
(visited on 17.7.2015).
31
CTMR Proposal [original draft and explanatory memorandum], Explanatory memorandum, p. 7 and TMD
Proposal [original draft and explanatory memorandum], Explanatory memorandum, p. 5.
32
Knaak, R., Venohr, P., Study on the Overall Functioning of the European Trade Mark System, p. 33.
33
http://europa.eu/rapid/press-release_IP-13-287_en.htm?locale=en (visited on 13.7.2015).
12
Therefore, the requirement of graphic representation shall be replaced by the
Sieckmann34 criteria. However, is it really the requirement of graphic representation that is
the biggest obstacle hindering registration of sensory marks? The impact of the proposed
abandonment of the graphic representation requirement on each of the sensory mark is
discussed below in the respective chapters. Even though the proposed reform brings more
flexibility into the representation of the protected sign, the application has to satisfy the
seven criteria (the Sieckmann Seven)35 laid down in Sieckmann.36 As a result, it is not
expected that the scope of protection would in the aggregate broaden in considerable
extent.37
Accordingly, as the CTMR Proposal aims for graphic representation criterion
removal, the same idea is reflected in the TMD Proposal for trade mark system
harmonization across the Member States.38
2.3
Capability to distinguish goods or services of one undertaking from those of
other undertakings
Capability of a being distinctive is the essential characteristic of the sign seeking
for registration. Article 7(1)(b)(c)(d) CTMR and Article 3(1)(b)(c)(d) TMD specify which
signs cannot be registered as CTMs and trade marks in Member States respectively under
absolute grounds for refusal due to lack of distinctive character:

“trade marks which are devoid of any distinctive character [non-distinctive marks];

trade marks which consist exclusively of signs or indications which may serve, in trade,
to designate the kind, quality, quantity, intended purpose, value, geographical origin or
the time of production of the goods or of rendering of the service, or other
characteristics of the goods or service [descriptive marks];
34
Case C-273/00 Sieckmann v Deutsches Patent- und Markenamt [2003].
The representation of the sign has to be clear, precise, self-contained, easily accessible, intelligible, durable
and objective.
36
Case C-273/00 Sieckmann v Deutsches Patent- und Markenamt [2003].
37
Alén-Savikko, A., Conflict Between Freedom of Expression And Trademark – Reality Or Fiction?,
available at:
www.iprinfo.com/verkkolehti/kaikki_artikkelit/2015/1_2015/fi_FI/conflict_between_freedom_of_expression
_and_trademark_reality_or_fiction/ (visited on 20.8.2015).
38
TMD Proposal, Article 3.
35
13

trade marks which consist exclusively of signs or indications which have become
customary in the current language or in the bona fide and established practices of the
trade [customary marks].”39
Nevertheless, even if a mark fails the test of distinctiveness, it can still be proved
that the mark has acquired a distinctive character throughout use that has been made of it
before filing of the application. If the acquired distinctiveness is proved, the trade mark
may be registrable. This is vital for all the sensory marks, which could scarcely be
distinctive by nature, but could be shown to have become distinctive i.e. distinctive by
nurture.40 For example, the CJEU held in Libertel41 that a colour per se could only rarely
be inherently distinctive, but that it can acquire distinctiveness through use.42 The decision
pondered also about the issue of depletion43 and was notable from the competitors’
perspective, because the Court departed from its “usual reasoning to consider the interest
of competitors in availability of signs only for the assessment of the descriptive character
of marks.”44 In the case at hand, it was clear that the colour was not descriptive of the
services offered, but was devoid of distinctive character. Therefore, the Court took into
account not only the consumers’ view but also the competitors’ aspect.45
Provisions on distinctiveness lay down what can and what cannot be registered as a
trade mark in the EU. They represent an essential function of balancing the interests
between the future trade mark proprietors and the competing traders. If there is more
variety in types of registrable marks, at the same time, there are fewer marks in the ‘public
domain’ for competitors to use.46
Furthermore, the capability to distinguish goods or services of one entrepreneur
from another mirrors the key function of the trade marks being the identification of trade
origin. In order to be distinctive, the mark has to serve its essential function as a source of
origin. If the mark fails to be distinctive and is no longer capable of distinguishing goods
39
CTMR, Article 7(1)(b)(c)(d) and TMD, Article 3(1)(b)(c)(d).
Laurie, G., et al., Contemporary Intellectual Property: Law and Policy, p. 589.
41
Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2004].
42
ibid, para. 66.
43
see Chapter 2.5.4
44
Kur, A., Strategic Branding: Does Trade Mark Law Provide for Sufficient Self Help and Self Healing
Forces?, p. 213.
45
ibid.
46
Laurie, G., et al., Contemporary Intellectual Property: Law and Policy, p. 589.
40
14
or services of different traders, it becomes generic. When the sign becomes widely used by
public to such extent that it starts indicating source of origin to a whole class of goods or
services, it can no longer be relied upon to have the capability to separate and distinct
between the goods and services of different entrepreneurs.47
However, a deal of controversy could also be spotted in the inconsistency between
how a mark is portrayed in the register and, on the other hand, how it is marketed and used
in real life business. It is rather ironic if the mark has to fulfil all the criteria for
representation of the sign and its distinctiveness to secure the registration, but subsequently
the owner does not use the mark in the depicted way. Pursuant to Article 15 CTMR and
Article 10 TMD, if the proprietor has not put the CTM or the trade mark to genuine use in
the Community or in the Member State respectively in connection with the goods or
services in respect of which it is registered for a continuous period of five years, the
proprietor risks cancellation by third parties.48 In Rintisch49 the CJEU confirmed that it is
acceptable if such use deviates from the registered form, but only in elements that do not
modify the distinctive character of the mark as registered. The Court thereby affirmed that
trade mark proprietors have the freedom to make minor alterations when marketing and
promoting their marks.50
2.4
Exclusive nature of the trade mark right and trade mark functions
The essence of the trade mark protection is to protect the exclusive right of the
trade mark owner established by the registration of its mark at the register authority. The
trade mark right is an absolute, subjective right entitling the trade mark proprietor to
prohibit a use of a sign infringing its mark regardless of other interests of the parties
involved. One exception to that was established in Arsenal51 and applies for a situation
when the trade mark does not serve to protect one of its functions, including the essential
47
Bently, L., Sherman, B., Intellectual Property Law, pp. 952-953.
RGC Jenkins & Co, Viva la Difference? Well, Not Always., available at: http://www.jenkins.eu/news-andpublications/archive/make-your-mark-spring-2013/2viva-la-difference-well-not-always/
(visited
on
20.8.2015).
49
Case C-553/11 Bernhard Rintisch v Klaus Eder [2012].
50
RGC Jenkins & Co, Viva la Difference? Well, Not Always., available at: http://www.jenkins.eu/news-andpublications/archive/make-your-mark-spring-2013/2viva-la-difference-well-not-always/
(visited
on
20.8.2015); see also the amendment of the ‘Examination of opposition’ and ‘Examination of application’ in
the Proposals.
51
Case C-206/01 Arsenal Football Club plc v Matthew Reed Case [2003].
48
15
function of being able to serve as a source of origin.52 The Court noted that the trade mark
proprietor may not prohibit use that cannot affect the proprietor’s interests having regard to
its functions, which include descriptive and informative use.53
Therefore, “the essential function of a trade mark is to guarantee the identity of
origin of the marketed goods or services to the consumer or end user by enabling him,
without any possibility of confusion, to distinguish the goods or services from others which
have another origin.”54 Nevertheless, alongside the main function the CJEU recognized in
L’Oréal55 another trade mark functions, which are derived from the origin function such as
investment, advertising or quality function, sometimes referred to as communicative
functions of a trade mark. They switch the focus from the consumer on the value of the
mark. The adjacent functions stretch the protection beyond consumer confusion to
protecting marks with reputation against the use of the same or similar marks in connection
with the same or dissimilar goods or services. Therefore, the other functions are a very
useful tool in cases where the use by the competitor dilutes the mark of the proprietor by
taking unfair advantage of the reputation or by being detrimental to the distinctive
character or reputation of the earlier mark.56
However, since the CJEU case law on trade mark functions is rather confusing, one
of the initial aims of the trade mark reform was the unification of the functions and
elimination of discrepancies arising from the inconsistent CJEU jurisprudence.
Nonetheless, the Commission’s attempt to rectify the CJEU case law by reinstating the
focus on the essential function of the trade mark, guarantee of trade origin, did not make it
into the finalized compromise draft of the Proposals.57
52
Jehoram, T., et al., European Trademark Law: Community Trademark Law and Harmonized National
Trademark Law, p. 241.
53
Alén-Savikko, A., Conflict Between Freedom of Expression And Trademark – Reality Or Fiction?,
available at:
www.iprinfo.com/verkkolehti/kaikki_artikkelit/2015/1_2015/fi_FI/conflict_between_freedom_of_expression
_and_trademark_reality_or_fiction/ (visited on 20.8.2015).
54
Case C-206/01 Arsenal Football Club plc v Matthew Reed Case [2003], para. 48.
55
Case C-487/07 L’Oréal v Bellure [2009].
56
Laurie, G., et al., Contemporary Intellectual Property: Law and Policy, p. 553; see also Alén-Savikko, A.,
Conflict Between Freedom of Expression And Trademark – Reality Or Fiction?, available at:
www.iprinfo.com/verkkolehti/kaikki_artikkelit/2015/1_2015/fi_FI/conflict_between_freedom_of_expression
_and_trademark_reality_or_fiction/ (visited on 20.8.2015).
57
Senftleben, M., Function Theory and International Exhaustion –Why it is Wise to Confine the Double
Identity Rule to Cases Affecting the Origin Function, p. 518.
16
2.5
The potential US influence and general matters relating to registrability of
sensory marks in the EU and in the USA
As already mentioned above, the currently most discussed obstacle preventing most
of the sensory marks from being accepted by the trade mark registers and enjoy the same
protection as other registered trade marks, graphic representation is only one of the many
issues connected with the sensory marks.
A good example, that the graphic representation is not a single issue standing in the
way of registration of sensory marks, is the USA, which chose a broader approach than
most of other world’s jurisdictions. The main ground for trade mark law in the US
legislation is the Trade Mark Act of 1946, commonly referred to as the Lanham Act. The
Lanham Act allows registration of a mark that has become distinctive of the applicant's
goods in commerce, provided that it does not fall under exceptions enumerated in the act.
Therefore, the potential applicants are not limited by such strict restrictions as in the EU,
though for example the functionality bar is vigorously enforced.
Therefore, given the fact that the US legislation does not require graphic
representation, the USPTO has been accepting and dealing with different kinds of nonvisual representations. Hence, the USPTO’s practice can serve as a very good source of
inspiration for the EU. Principally, the EU can get good ideas by following the line of
dispute resolution in trade mark infringement cases. Also, the USPTO’s management of
the trade marks falling into the category of ‘not being representable by a drawing’ can be a
source of possible solutions for potential queries arising during searches in the OHIM
database after the abandonment of graphic representation requirement.
However, it should be noted that there are several differences between the two
systems. The EU is not a federation as opposed to the USA. Even though in some aspects
the sui generis character of the union resembles to federative principles, the Member States
possess considerably more power when it comes to creating national rules. In addition, the
EU is very heterogeneous as it is comprised of many different languages, legal
environments and cultures. Therefore, it is much harder to apply any uniform rules for a
heterogeneous body such as the EU than it is for the federation as the USA.
17
Moreover, the precedential system, which is characteristic for the US jurisdiction,
does not apply in the same manner in the EU. The EU jurisdiction operates on the grounds
of a quasi-precedential system (acte éclairé doctrine) established by the CJEU in Da
Costa58 by deciding that there is no need to refer a preliminary question if the question
raised is materially identical to a question that has already been subject of a preliminary
ruling.59
Furthermore, it should not be overlooked that the commercial practice, legal culture
and the traditional understanding of trade mark by both owners and consumers has been
developing differently in each of the environments. However, the different development
and regulation also resulted in a substantially higher amount of case law relating to sensory
marks that can be of a great use for both the legislators and register authorities in the EU.
2.5.1 Functionality and aesthetic functionality
As already mentioned, the USPTO puts a lot of emphasis on the enforcement of the
functionality bar. A trade mark is to be declared functional “if it is essential to the use or
purpose of the article or if it affects the cost or quality of the article.”60 Finding of
functionality often serves as a bar towards the evidence of distinctiveness and has been
regarded as a threshold issue to secondary meaning.61
The EU’s position on functionality is somewhat ambivalent. The CTMR accepts
that in particular cases there is a need to keep the signs free for competition and thus
acquired distinctiveness cannot be established.62 Article 7(e) CTMR stipulates under
absolute grounds for refusal that signs which consist exclusively of the shape resulting
from the nature of the goods themselves, the shape of goods which is necessary to obtain a
technical result and the shape giving substantial value to the goods shall not be registered
as CTM. Since literal comprehension of the article confines the functional aspect to shapes,
58
Cases 28–30/62 Da Costa en Schaake N.V. and others v Nederlandse Belastingadministratie [1963].
http://www.caselawofeu.com/initiation-of-precedential-system-in-da-costa-case/ (visited on 31.7.2015).
60
Qualitex, supra, at 165 (quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850, n.
10).
61
Winckel, E., Hardly a black-and-white matter: Analyzing the validity and protection of single-color
trademarks within the fashion industry, p. 1020.
62
Kur, A., Strategic Branding: Does Trade Mark Law Provide for Sufficient Self Help and Self Healing
Forces?, p. 197.
59
18
it is not entirely clear whether the principle applies to other signs having similar
detrimental effect on competitors.63
An aesthetic functionality is a more specific defence used when the aesthetic
feature of a product is itself the mark that company is seeking to protect. The doctrine is
based on a premise that the visual appeal of a trademark must be free for all to imitate,
because it is an essential ingredient in the commercial success of a product and restricting
its use would hinder fair competition within marketplace.64
2.5.2 Secondary meaning
The criterion of secondary meaning is more complex and represents a characteristic
particularity of the US trade mark registration system.65 The secondary meaning is
established if "in the minds of the public, the primary significance of a product feature or
term is to identify the source of the product rather than the product itself."66 The US courts
accept as a direct evidence consumer testimonies and surveys, and as a circumstantial
evidence advertising campaigns and expenditures.67
However, the concept of trade mark rights being accrued by usage, not by
registration is not unknown in the EU system. Article 7(3) CTMR and Article 3(3) TMD
allows registration of signs, which lack inherent distinctiveness but have demonstrated
acquired distinctiveness throughout the course of usage. Hence, to demonstrate secondary
meaning of a sign not only distinctiveness of the sign is required, but also this capability
has to be shown in practice over a specified period of exclusive and uninterrupted usage.
Therefore, a sign can become a trade mark by customers’ acceptance of it as such.68
63
Kur, A., Strategic Branding: Does Trade Mark Law Provide for Sufficient Self Help and Self Healing
Forces?, p. 198.
64
Vidackovic, V., Christian Louboutin v. Yves Saint Laurent: “Trademark use” Stomps its Red Heels on
“Likelihood of Confusion”, p. 465.
65
Opinion of Advocate General M. D. Ruiz-Jarabo Colomer [2001] in Case C-273/00 Sieckmann v
Deutsches Patent- und Markenamt [2003], para 31.
66
Kellogg Co. v. Nat'l Biscuit Co., 305 U.S. 111, 118 (1938).
67
Winckel, E., Hardly a black-and-white matter: Analyzing the validity and protection of single-color
trademarks within the fashion industry, p. 1019.
68
Opinion of Advocate General M. D. Ruiz-Jarabo Colomer [2001] in Case C-273/00 Sieckmann v
Deutsches Patent- und Markenamt [2003], para 31.
19
2.5.3 Dilution protection and generic marks
The value of trade marks and the prominence of branding in general are best
reflected in dilution protection for famous marks.69 The trade mark dilution consists of
“weakening of a famous mark’s ability to identify and distinguish goods or services,
regardless of competition in the marketplace or the likelihood of confusion.”70 Some marks
are so popular and well-known that they enjoy protection beyond likelihood of confusion.
The aim of the dilution protection is to prevent a coexistence of a mark that is sufficiently
similar to a famous mark disregarding the goods or service the consumers connect with the
allegedly diluting mark. Dilution typically occurs in forms of blurring, tarnishment and
free-riding.71
However, there is also the other side of the coin of becoming a famous mark. Signs
do not represent something stable and unmoving, on the contrary, they can repeatedly
acquire new meanings throughout time of use. They might for example become generic,
which means that the consumers associate any product or service within the industry with
the name of the brand. As a result of ‘becoming too famous’, the trade mark loses the
ability to serve as a source of origin. Article 3(1)(d) TMD and Article 7(1)(d) CTMR
prohibit registration of generic marks i.e. marks that “have become customary in the
current language or in the bona fide and established practices of the trade.” Therefore, if
the mark becomes generic, it is for free use to everybody and cannot be trademarked. In
case the mark has been already registered, it can be successfully revoked if it is proved that
it has become generic throughout time. This also serves as a tool for balancing, because the
customers themselves are able to deprive the most famous signs of their monopoly power.
2.5.4 Depletion
What seems at first glance a moral issue - monopolizing a respective sense in the
hands of one trader, becomes more business significant when considering that the amount
of respective senses to register is not infinite. This creates a substantial competition issue
Alén-Savikko, A., Conflict Between Freedom of Expression And Trademark – Reality Or Fiction?,
available at:
www.iprinfo.com/verkkolehti/kaikki_artikkelit/2015/1_2015/fi_FI/conflict_between_freedom_of_expression
_and_trademark_reality_or_fiction/ (visited on 20.8.2015).
70
http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkDilution.aspx (visited on 21.8.2015).
71
see more at ibid.
69
20
since the registration is given in the specific class relating to specific industry. If the other
competitors cannot choose to convey their ideas through free use of e.g. colours, because
all the distinctive shades have already been registered for that business field, they will be
placed at a disadvantage with consumers.72 The risk of depletion is more apparent with
marks that have already been more or less regularly applied-for and used in practice such
as colours, but could potentially apply for other senses as well.
2.5.5 Sieckmann Seven
The pioneer among all the non-traditional sensory trade mark cases in the EU was
Sieckmann73 in which the CJEU adopted the seven criteria for sign representation also
referred to as the Sieckmann Seven. The court held that Article 2 TMD “must be
interpreted as meaning that a trade mark may consist of a sign which is not in itself
capable of being perceived visually, provided that it can be represented graphically,
particularly by means of images, lines or characters, and that the representation is clear,
precise, self-contained, easily accessible, intelligible, durable and objective.”74 These
criteria represent a set of requirements that has to be fulfilled in order to be successful in
registering any non-visual trade mark.75
72
Londesborough, S., Should Colours be protected by trade mark law? What problems may arise in
Protecting them?, pp. 14-16.
73
Case C-273/00 Sieckmann v Deutsches Patent- und Markenamt [2003].
74
ibid, para. 55.
75
However, as can be seen in the chapter below (4.1.2), the Court has applied the Sieckmann Seven also for
visually perceivable signs such as colours.
21
3
Scents
Trade marks capturing smell as the trademarked sign are called by various names –
smell marks, scent marks, odour marks or olfactory marks. Scents are carrying strong
incentives how to capture consumers’ attention and subsequently their affection. Moreover,
scent is perceived as one of the most potent types of human memory. Olfactory marks with
their immense evocative power and close ties with the instinctive part of human behaviour
can have a strong impact on consumers’ preferences and secure their loyalty to certain
products.76 Nowadays, new innovative digital technologies, which are capable of
disseminating scents through the internet or television, are starting to emerge.77 However,
the registration procedure and subsequent successful claim for infringement remain to be
covered by a haze of uncertainty. The approach towards registration differs substantially in
the EU and the USA and the rest of the world has a far from harmonized attitude as well.
3.1
Overview of current legislation and important case law concerning
registration of scent marks
Registration of a scent or smell is still very rare and requires fulfilment of strict
criteria. Whereas the actual legal state in the EU imposes barely passable or impassable
hurdles, the US legislation and practise is much more inclined to registration of such
marks. To this day OHIM registered only one scent CTM, which had happened before the
imposition of Sieckmann Seven, and even that one expired in 2006 due to non-renewal.
Despite of its more benevolent attitude towards the registration, the registration of scents in
the USA does not appear to be the business strategy of today.
3.1.1 International framework
On the international level, the most significant documents were signed on the
grounds of the World Intellectual Property Organisation (the WIPO). So far, 36 countries
entered into or accessed to the Singapore Treaty on the Law of Trademarks of March 2006
(the Singapore Treaty).78 The Singapore Treaty together with the Regulations under the
Singapore treaty on the law of trademarks of 2011 (the Singapore Regulations) represent
76
Hernandez-Marti Perez, C., The Possibility of IP Protection for Smell, p. 665.
Reimer, E., A Semiotic Analysis: Developing a New Standard for Scent Marks, p. 693.
78
http://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=30.
77
22
a multilateral framework and international guidelines for trade marks and their registration
process. The Singapore Regulations expressis verbis name colour and sounds marks as
types of trademarkable signs, but also recognize “Marks Consisting of a Non-Visible Sign
Other Than a Sound Mark”. WIPO sets the framework for such non-visible signs
representation as following: “Where the application contains a statement to the effect that
the mark consists of a non-visible sign, other than a sound mark, a Contracting Party may
require one or more representations of the mark, an indication of the type of mark and
details concerning the mark, as prescribed by the law of that Contracting Party.”79
The graphic representation is not expressly mentioned, but the Contracting Parties
are free to set their own rules regarding the ‘representation of the mark’. Therefore, the
current CTM requirement for the sign to be represented graphically is in line with WIPO’s
Singapore Treaty and Regulations.
Similarly, the Agreement on Trade-Related Aspects of Intellectual Property Rights
(the TRIPS Agreement),80 applicable to all World Trade Organisation (the WTO)
members, does neither expressly mention nor exclude scents as kinds of trade marks.
Article 15 of the TRIPS Agreement pushes the WTO members to give trade mark
protection to all signs that are capable to distinguish products or services of one
undertaking from another, which scent marks are. At the same time, Article 15 also allows
the member state to require the signs to be visually perceptible, thus the graphic
representation required for CTMs is also in line with the TRIPS Agreement.81
3.1.2 EU regulation and case law
Sieckmann82 entailed a breaking point in unusual trade marks registrations. It
provided guidelines for the registration, but at the same time, practically shut the door
before the scent marks by excluding the possibility of their graphic representation in any of
the suggested forms. The court ruled that “[i]n respect of an olfactory sign, the
requirements of graphic representability are not satisfied by a chemical formula, by a
description in written words, by the deposit of an odour sample or by a combination of
79
Regulations under the Singapore treaty on the law of trademarks, 2011 (WIPO), Rule 3(10).
Agreement on Trade-Related Aspects of Intellectual Property Rights (1994), available at:
http://www.wto.org/english/docs_e/legal_e/27-trips.pdf (visited on 22.7.2015).
81
Hernandez-Marti Perez, C., The Possibility of IP Protection for Smell, p.673.
82
Case C-273/00 Sieckmann v Deutsches Patent- und Markenamt [2003].
80
23
those elements.”83 Further, the court reasoned in its decision that a chemical formula is
rather a representation of the substance than the odour. The deposition of a sample was
ruled down as well as the particular odour decays over a time and therefore is not durable.
Other forms of representation, such as e.g. chromatograms, have not been so far subject to
EU’s jurisprudence.84
Nevertheless, as mentioned above, one CTM application that had been filed at
OHIM before the Sieckmann decision was successful. The application of a Dutch company
for “smell of a fresh cut grass” in connection with tennis balls was registered in 2000.85 To
this day, this remains to be the only successful registration of a scent mark even though it
lapsed in 2006. The other six marks in the database were refused the registration,86 among
them the application to register “the scent or smell of raspberries” for engine fuels by
Myles Limited Application, which was rejected on the count of failing to be distinctive in
relation to the goods.87 The General Court has dealt with another case concerning
registration of the smell of ripe strawberries for cleaning preparations, stationery, leather
goods and clothing.88 However, the application form for the claimed trade mark showed
merely a picture of a strawberry with written description “smell of ripe strawberries”. The
court upheld the OHIM decision that this cannot be considered as a valid graphic
representation.89
Even though the combination of the criteria of graphical representation and the
Sieckmann Seven appears to be an almost impossible obstacle to surpass for most of the
non-conventional marks, the registration in the Member States might still prove to be
viable. There are certain examples of scent marks granted with protection that are still
being maintained.
United Kingdom
United Kingdom stands as an example of an EU country where a couple of scent
trade mark registrations have met the distinctiveness test criteria and were registered by the
83
Case C-273/00 Sieckmann v Deutsches Patent- und Markenamt [2003], para. 73.
Knaak, R., Venohr, P., Study on the Overall Functioning of the European Trade Mark System, p.66.
85
Vennootschap onder Firma Senta Aromatic Marketing, CTM 428870 (Oct. 11, 2000) [expired].
86
Laurie, G., et al., Contemporary Intellectual Property: Law and Policy, pp. 581-582.
87
Appeal No. R0711/1999-3, OHIM Third Board of Appeal, Dec. 5, 2001.
88
T-305/04 Eden SARL v OHIM [2003] ECR II – 4705.
89
Norman, H., Intellectual Property Law Directions, p. 376.
84
24
UK Trade Marks Office. However, subsequently, the UK scent mark registrations for tyres
with “a floral fragrance/smell reminiscent of roses”90 and flight for darts with “the strong
smell of bitter beer”91 were not supported by OHIM.92 Acceptance of such descriptions
was diverting UK to a different direction than the rest of Member States. That was one of
the reasons behind the rejection of an application for “the smell, aroma or essence of
cinnamon”93 even though such registrations based on descriptions were given green lights
before. The smell of cinnamon was held not to be recognisable or distinguishable enough
as e.g. that of ‘freshly cut grass’94 and the interpretation thereof could differ widely.95
The UK Trade Mark Register followed the concept of functionality and refused
Chanel’s application to register its well-known No. 5 fragrance as a scent mark. The smell
of the perfume was obviously the very essence and the functional aspect of the product.96
3.1.3 US regulation and case law
Scent marks are registrable as long as the word, name, symbol, or device, or any
combination thereof is used in trade to identify and distinguish goods or services and to
indicate source.97 The requirements for registering a mark consisting solely of a scent or
sound no longer mandate an accompanying drawing. Instead, a detailed written description
of the non-visual mark must be provided. This has made it easier to seek the registration of
such marks. In 1990 a scent reminiscent of Plumeria blossoms for sewing thread and
embroidery yarn was registered after the application succeeded at the Trademark Trial and
Appeal Board (TTAB), a body within the USPTO responsible for hearing and deciding
certain kinds of cases involving trade marks.98 It was held that the scent mark had acquired
90
UK Trade Mark No. 2001416, class 12 - tyres for vehicle wheels, Proprietor Goodyear Dunlop Tyres UK
Ltd. (April 9, 1996).
91
UK Trade Mark No. 2000234, class 28 - flights for darts, Proprietor Unicorn Products Limited (May 3,
1996).
92
http://www.wipo.int/wipo_magazine/en/2009/01/article_0003.html (visited on 12.8.2015).
93
Application No. 2000169, Applicant: John Lewis of Hungerford Plc, class 20 – articles of furniture and
parts of fittings (filed Oct. 31, 1994, refused Dec. 19, 2000).
94
Vennootschap onder Firma Senta Aromatic Marketing, CTM 428870 (Oct. 11, 2000) [expired].
95
Hernandez-Marti Perez, C., The Possibility of IP Protection for Smell, p. 673.
96
http://www.wipo.int/wipo_magazine/en/2009/01/article_0003.html (visited on 12.8.2015).
97
Lanham Act § 45 (15 U.S.C. § 1127).
98
Clarke, 17 U.S.P.Q.2d 1238 (T.T.A.B. 1990).
25
distinctiveness through use. The decision in Clarke led to the acceptance of scents being
able to function as trade marks.99
The verbal description is regarded as a crucial factor enabling the public to
understand what the mark is comprised of. For the registration to succeed at the Principal
Register, the applied-for olfactory signs have to be distinctive of a product, or must have
acquired secondary meaning for particular goods or services and cannot be functional for
the product. The criterion of functionality is absolute, hence smells associated with
perfumes or air fresheners would hardly comply with the criteria for scent trade mark
registration.100 However, failure to fulfil the criterion of secondary meaning still allows the
mark to be registered at the Supplemental Register where the scent mark registrations are
much more common.101
To this point, only one scent mark registration made it to the Principal Register. A
cherry scent designed to replace noxious fumes at the racetrack was registered for synthetic
lubricants for high performance and recreational vehicles.102 The more unrelated the scent
is to the products or services that its registration is applied for; the more probable is the
success of the registration procedure. However, to fulfil the criterion of secondary meaning
proved to be a very hard test to surpass for the scent marks, which is why the number of
registration thereof in the Principal Register is much scarcer than in the Supplemental
Register. The Supplemental Register maintains various, often peculiar, scent marks
consisting of for example coconut scent for retail stores selling sandals, beach balls,
Frisbees and other products,103
scent of rose oil for advertising and marketing104 or
strawberry for toothbrushes.105 However, one of the most curious scent registrations
99
Mezulanik, E., The Status of Scents as Trademarks: An International Perspective, available at:
http://www.inta.org/INTABulletin/Pages/TheStatusofScentsasTrademarksAnInternationalPerspective.aspx
(visited on 27.8.2015).
100
Mackie, V., Scent Marks the Future of Canadian Trade-mark Law, p. 36.
101
Mezulanik, E., The Status of Scents as Trademarks: An International Perspective, available at:
http://www.inta.org/INTABulletin/Pages/TheStatusofScentsasTrademarksAnInternationalPerspective.aspx
(visited on 27.8.2015).
102
Gilson LaLonde, A., Gilson, J, Getting Real With Nontraditional Trademarks: What’s Next After Red
Oven Knobs, the Sound of Burning Methamphetamine, and Goats on a Grass Roof?, pp. 206-207.
103
U.S. Reg. No. 4,113,191 (June 15, 2010).
104
U.S. Reg. No. 3,849,102 (Nov. 12, 2009).
105
U.S. Reg. No. 3,332,910 (Nov. 22, 2004).
26
consists of the scents of apple cider, peppermint, vanilla, peach, lavender, and grapefruit
for hanging file folders.106
One of the freshest examples of a scent mark, which did not make it even to the
Supplemental Register was an application for peppermint scent for medical nitroglycerine
spray.107 The application has been rejected on grounds of functionality by the TTAB. Apart
from underlining the functional matter of the product, the TTAB concluded that the
applicant had not provided any proof of distinctive nature of the trade mark. The applicant
must not only show that the mark is capable of distinguishing the product from those of its
competitors, but it also has to be sufficiently diverse from the designated product or
service. The TTAB also noted that the use of peppermint in a nitroglycerine spray by the
applicant lacked exclusivity since it has also been used in other sprays.108
3.2
Practical issues arising from registering scents as trade marks
Scents dispose with an olfactory power to affect the preferences of customers.
Moreover, scent is perceived as one of the most potent types of human memory. Could
then a trade mark protection of a scent claimed by a single entrepreneur give too much
power and monopoly to the applicant and hence cause obstructions for fair competition?
So far, this question does not seem to be of the same relevance as for example in the field
of colour trade marks due to the fact that scent marks are not that popular in the current
business world.
Even though an increasing interest in pairing pleasant scents with the products by
the entrepreneurs can be spotted, to obtain a registration of a scent mark is quite
challenging, in case of CTMs almost impossible. The product’s scent has to be graphically
representable and must show that it is distinctive from the product itself. As stated above
this task is far from easy in the EU after the judgment given in the Sieckmann.109 To
106
U.S. Reg. Nos. 3,140,701 (Sept. 5, 2006) [apple cider]; 3,140,700 (June 13, 2005) [peppermint];
3,143,735 (Sept. 12, 2006) [vanilla]; 3,140,694 (Sept. 5, 2006) [peach]; 3,140,693 (Sept. 5, 2006) [lavender];
3,140,692 (Sept. 5, 2006) [grapefruit].
107
Pohl-Boskamp GmbH & Co. KG 106 U.S.P.Q.2d 1042 (T.T.A.B. 2013).
108
Dreyfus & associés, USA: Requests for Scent-based Trademarks – Rejection of “Distinctive Flavor of
Peppermint”
and
“a
Peppermint
Scent”
for
Medicinal
Products,
available
at:
http://www.dreyfus.fr/en/trademarks/usa-requests-for-scent-based-trademarks-rejection-of-distinctive-flavorof-peppermint-and-a-peppermint-scent-for-medicinal-products/ (visited on 19.7.2015).
109
Case C-273/00 Sieckmann v Deutsches Patent- und Markenamt [2003].
27
represent a scent in a visual way is challenging in itself, but if the CJEU has expressly
excluded chemical formulas, because they represent rather the substances than the odours,
as well as bottled examples of odours due to the fact that their scent decay over a time, it
becomes hardly possible for the applicants to provide a written description of a scent,
which has to be so precise that that particular smell would not be confused with any
other.110 Moreover, the scent itself must not represent the functional aspect of the product
and therefore cannot result from the nature of the good itself.
Another argument of the CJEU against the representation of scent marks by
chemical formulas has been that only few would recognise the odour in question in it and
thus the chemical formula fails to be sufficiently intelligible.111 This reasoning is however
somewhat controversial given that musical scores were approved as being capable to stand
as graphic representation of sound marks even though an ability to read musical score is
a pre-requisite for understanding thereof.112 Musical scores were ruled to be
comprehensive enough for high number of persons as opposed to chemical formulae,
which was considered to be problematic to comprehend and recreate for an average
consumer.113 Hence, the test of ‘being intelligible to average consumer’ has been applied
much more favourably for the sound marks. It is not clear whether the reason behind the
different approach results from the actual juxtaposition of the likelihood of an average
consumer being capable to read musical scores and the likelihood to understand chemical
formulas. It is however more probable that the decision in favour of musical scores was
simply implied by the competent authorities from the fact that sound marks fulfil the other
criteria for successful registration and proved to be less problematic for registering overall.
The likelihood of confusion of the customers should also be taken into account
considering the fact that the ability to recognise smells and scents varies from person to
person. It is arguable if everyone is gifted enough to process various types of scents and
identify them as sources of origin of certain goods since they do not dispose with such a
strong visual power as for example colours do. Generally, sight provides us with much
greater incentives than smell. This, however, does not automatically mean that scent marks
110
Mezulanik, E., The Status of Scents as Trademarks: An International Perspective, available at:
http://www.inta.org/INTABulletin/Pages/TheStatusofScentsasTrademarksAnInternationalPerspective.aspx
(visited on 27.8.2015).
111
Case C-273/00 Sieckmann v Deutsches Patent- und Markenamt [2003], para 69.
112
Case C-283/01 Shield Mark BV v Joost Kist [2004], see Chapter 5.1.2.
113
Hernandez-Marti Perez, C., The Possibility of IP Protection for Smell, p. 673.
28
are not capable of conveying the origin and distinctiveness of a certain brand at all, only
that they certainly dispose of less power to convey such ideas than for example colour
marks.
Moreover, another less obvious issue can arise from the applicant’s own marketing.
Leading marketing specialists, such as Professor Bernd H. Schmitt, promote using sensory
stimuli in marketing products and services as an innovative and appealing marketing
strategy. According to Professor Schmitt, sense marketing appeals to the five senses –
sight, sound, scent, taste and touch with overall purpose to provide aesthetic pleasure,
excitement, beauty, and satisfaction through sensory stimulation.114 However, sensory
marketing can inevitably lead to advertisement of sensory features as products’ functional
features, which might mean a dead end for the sensory trade mark aspirations.115
3.3
Will the proposed abandonment of the graphic representation affect the
registrability of scent marks?
Even if the criterion of graphic representation is to be left out of the EU legislation,
the Sieckmann Seven remains to be a hurdle in the registration process of scent marks. It is
not very probable that the abandonment of graphic representation requirement would open
the floodgates to scent marks registrations and offer a much widened scope of protection.
Pursuant to the Sieckmann Seven the representation of an olfactory, and any other, sign
must enable determination of what exactly is covered by the application. 116 Nonetheless,
not only the criteria set in Sieckmann117 remain in force until overruled by a
groundbreaking decision, but, in addition to that, the Court has explicitly turned down all
the suggested means of representation such as chemical formulas, written descriptions,
deposits of a sample or even combination thereof. Therefore, the scent marks seekers
114
Schmitt, B., Experiental Marketing: How to Get Customers to Sense Feel Think Act Relate To Your
Company and Brands, 1999, p. 99 cited in Gilson LaLonde, A., Gilson, J, Getting Real With Nontraditional
Trademarks: What’s Next After Red Oven Knobs, the Sound of Burning Methamphetamine, and Goats on
a Grass Roof?, p. 197.
115
Gilson LaLonde, A., Gilson, J, Getting Real With Nontraditional Trademarks: What’s Next After Red
Oven Knobs, the Sound of Burning Methamphetamine, and Goats on a Grass Roof?, p. 197.
116
Alén-Savikko, A., Conflict Between Freedom of Expression And Trademark – Reality Or Fiction?,
available at:
www.iprinfo.com/verkkolehti/kaikki_artikkelit/2015/1_2015/fi_FI/conflict_between_freedom_of_expression
_and_trademark_reality_or_fiction/ (visited on 20.8.2015).
117
Case C-273/00 Sieckmann v Deutsches Patent- und Markenamt [2003].
29
would have to come up with some new ideas for the representation of an olfactory sign in
order to succeed with their registration.
Several ideas have been evolving regarding the scent representation with the most
remarkable being the separation techniques such as gas chromatography (GC) and high
performance liquid chromatography (HPLC) analysing volatiles of the smell and
instrumental methods such as spectrometry (MS), nuclear magnetic resonance (NMR) or
infra-red (IR) and ultraviolet (UV) spectroscopy.118 Scientists are currently working on
digital scent technologies, which would allow the scent to be transmitted and received by
digital media.119 To this point, none of these have been tested as representations for scent
marks before OHIM, but maybe the opening of the possibilities offered by the removal of
obligatory graphic representation can become a breeding ground for testing thereof.
One of such revolutionary methods is a ‘smelling screen’ method consisting of an
olfactory display system for presenting a virtual odour source allowing transmission of the
smell fragrance directly through the computer screen, which is being developed by
research team lead by Haruka Matsukura from Tokyo University of Agriculture and
Technology. This technology allows transmission of the smell fragrance directly through
the computer screen. So far, the system works only for one smell at the time, but the aim is
to incorporate a cartridge that would allow changing of the scents easily.120 This would
offer a scent sampling option for the trade mark register, which could be a solution for the
problem of decaying of the samples deposited in the register over time.121 Even though
such system is still too financially exhaustive to be used by the register offices, it shows
that advanced technological systems, which nowadays may seem to be too daring, might in
fact become available and affordable in not such a distant future. Upon reaching such point
of development, OHIM should be able to create an electronic register with samples of
registered scent marks such as with sound marks.122
118
Schaal, C., The Registration of Smell Trademarks in Europe: another EU Harmonisation Challenge
available at: http://www.inter-lawyer.com/lex-e-scripta/articles/trademarks-registration-smell-EU.htm#_ftn33
(visited on 3.8.2015); see also Hernandez-Marti Perez, C., The Possibility of IP Protection for Smell, p. 668.
119
Hernandez-Marti Perez, C., The Possibility of IP Protection for Smell, p. 668.
120
Hodson, H., Smell-o-vision Screens Let You Really Smell the Coffee, available at:
https://www.newscientist.com/article/mg21729105-900-smell-o-vision-screens-let-you-really-smell-thecoffee/ (visited on 3.8.2015) see also Hernandez-Marti Perez, C., The Possibility of IP Protection for Smell,
p. 668.
121
Hernandez-Marti Perez, C., The Possibility of IP Protection for Smell, p. 668.
122
ibid, p.673.
30
Another interesting idea of classifying scents emerged in the USA. The Perfumery
Radar123 methodology developed in 2010 helps to distinguish among scents and is designed
to classify a scent within eight olfactory families: citrus, fruity, floral, green, herbaceous,
musk, oriental and woody. The Perfumery Radar can analyse the perfumes by locating the
present scents and measuring their proportions in the fragrance. As a representation of the
scent mark, the applicant could attach to its trade mark application the Perfumery Radar
methodology result together with gas chromatography.124 However, even though such
application could be potentially considered as clear, precise, self-contained, easily
accessible, objective and even durable, it would probably fail the intelligibility test as not
being comprehensive enough for an average consumer, similarly as chemical formulae.
Nevertheless, the system could potentially evolve into being something similar for scents
as the Pantone Matching System125 is for colours.
Even though the Proposals open the door to non-visual forms of representation, this
novelty brings a number of uncertainties connected with for example the examination of
the application, the distinctiveness of the mark or conducting the searches for previously
registered trade marks. Even if OHIM would be able to create a database of scent samples
the issue regarding the decay of the smell and degradation of its distinctiveness over time
would remain. It is hence not clear whether the legal certainty would indeed be enhanced
by allowing non-visual representations of scents to be registered.126
To sum up, the future of the scents registered as trade marks seems to be hugely
relied on the ability of the representation of a scent to comply with Sieckman Seven, which
remains to be a hard task to solve for the registration seekers even without having to face
the hurdle in form of the graphic representation requirement. For now, the registered scent
marks remain to be scarceness even in the USA where the trade mark environment is much
keener to registration thereof than in the EU.
123
see more at http://pubs.acs.org/doi/abs/10.1021/ie403968w (visited on 3.8.2015).
Reimer, E., A Semiotic Analysis: Developing a New Standard for Scent Marks, p. 719.
125
see more at https://www.pantone.com/the-pantone-matching-system (visited on 2.8.2015).
126
Gérard, A., The Proposal to Delete the Requirement of Graphical Representation of a Trade Mark
Registered in the European Union, available at https://ipcopy.wordpress.com/2014/01/24/the-proposal-todelete-the-requirement-of-graphical-representation-of-a-trade-mark-registered-in-the-european-union/
(visited on 17.7.2015).
124
31
4
Colours
Registration of colours is expanding more and more into various areas of business.
Because of the enormous visual power the colours dispose with, the registration thereof as
trade marks shall deserve an increased attention and specific approach with respect to other
types of trade marks. Registering a colour per se or colour combination is subject to
slightly different criteria even in states where such registration is allowed. Registration of a
single colour is still rather occasional and requires fulfilment of strict criteria.
4.1
Overview of current legislation and important case law concerning
registration of colour marks
4.1.1 International regulation
Already in 1996, INTA recognized colours as means of distinguishing goods and
services in the marketplace and opined that colour marks, both in form of a combination of
colours or in form of a single colour, may serve as trade marks and should be entitled to
recognition, protection and registration as trade marks.127
The TRIPS Agreement,128 administered by the WTO, expressly recognizes a sign
consisting of combination of colours as being able to be protected as a trade mark, but does
not refer to registration of single colours.129 However, TRIPS lists only examples of signs
and does not anyhow exclude single colour from the scope of its protection.130
WIPO’s Singapore Treaty together with the Singapore Regulations not only
expressly mention colour marks as being types of trade marks, but also set criteria for their
registration. The Singapore Regulations distinguish between claiming colour as
a distinctive feature of the mark and claiming a colour per se mark or a combination of
colour as a mark without any delineated contours:
127
http://www.inta.org/Advocacy/Pages/ProtectabilityofColorTrademarks.aspx (visited on 22.7.2015).
Agreement on Trade-Related Aspects of Intellectual Property Rights (1994), available at:
http://www.wto.org/english/docs_e/legal_e/27-trips.pdf (visited on 22.7.2015).
129
Humphreys, G., A Selective Review of Colour Mark Issues and Case Law in the EU, available at:
http://fordhamipconference.com/wp-content/uploads/2013/03/2013.humphries.design.paper_.pdf (visited on
22.7.2015).
130
Gervais, D., The TRIPS Agreement: Drafting History and Analysis, p. 167.
128
32
“Where the application contains a statement to the effect that the applicant wishes
to claim color as a distinctive feature of the mark, the Office may require that the
application indicate the name or code of the color or colors claimed and an indication, in
respect of each color, of the principal parts of the mark which are in that color.”131 (the
Mark Claiming Colour)
“Where the application contains a statement to the effect that the mark is a color
per se mark or a combination of colors without delineated contours, the reproduction of
the mark shall consist of a sample of the color or colors. The Office may require a
designation of the color or colors by using their common names. The Office may also
require a description on how the color is or the colors are applied to the goods or used in
relation to the services. The Office may further require an indication of the color or colors
by a recognized color code chosen by the applicant and accepted by the Office.”132 (the
Colour Mark)
Distinguishing between these two types is very important as the occurrence of the
former, the Marks Claiming Colour, is very common and practically every trader wishing
to register their sign or mark in colour (not black and white) falls under this section.
The latter case, the Colour Marks, is rather rare and not all the Member States have
provided a registration for such a mark yet or are facing several difficulties concerning the
clarity of such registrations, though as seen below, the EU legislation and case law of the
CJEU allow and provide grounds for registration and protection of Colour Marks.
4.1.2 EU regulation and case law
The first time the CJEU held that a colour per se might be registered and protected
as a trade mark was in Libertel.133 The Court dismissed the application for registration of
the colour orange in telecommunication services, but held that a colour may have a
distinctive character within the meaning of Article 3 TMD, but has to be represented
graphically. Pursuant to the judgment, the graphic reproduction by itself is not sufficient
and the court further referred to the seven criteria established in Sieckmann134 i.e. the mark
131
Regulations under the Singapore treaty on the law of trademarks, 2011 (WIPO), Rule 3(2).
ibid, Rule 3(7).
133
Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2004].
134
Case C-273/00 Sieckmann v Deutsches Patent- und Markenamt [2003].
132
33
must be clear, precise, self-contained, equally accessible, intelligible, durable and
objective. This could not have been satisfied by a simple paper reproduction of the colour,
because it was not capable to fulfil the criterion of durability. Nevertheless, the Court
further stipulated that a sample with specification of the colour by an internationally
recognised identification code (such as Pantone, RAL, Focoltone etc.) is capable to
constitute an acceptable graphic representation.135 Concerning the matter of distinctiveness
the CJEU stated that “[i]n the case of colour per se, distinctiveness without any prior use is
inconceivable save in exceptional circumstances, and particularly where the number of
goods or services for which the mark is claimed is very restricted and the relevant number
very specific.”136
In KWS Saat137 the CJEU again rejected an application for registration of a single
colour orange essentially for seeds, but also covering other agricultural and forestry
products. The application was rejected on the grounds of lack of distinctiveness. The
graphic representation also lacked clarity as to the form or forms in which the colour
would appear. Similarly as in Libertel138 before, the Court did not deal with the problem of
spatial delimitation.139
The CJEU dealt with the issue of spatial delimitation of the claimed sign in
Heildelberg Bauchemie140 where a colour combination of blue and yellow was claimed as
a trade mark for various products in the building industry. The CJEU held that the
application lacked precision and uniformity as the wording thereof allowed numerous
different combinations. Another problem of the application was in the form of the sign,
which missed further spatial delimitation. However, the core meaning of the decision for
registration of colour combinations dwells in the court's statement that “a graphic
representation consisting of two or more colours, designated in the abstract form and
without contours, must be systematically arranged by associating the colours concerned in
a predetermined and uniform way.”141
135
Laurie, G., et al., Contemporary Intellectual Property: Law and Policy, p. 582.
Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2004], para. 66.
137
Case C-447/02 KWS Saat AG v OHIM [2004].
138
Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2004].
139
Kitchin, D., et al., Kerly's Law of Trade Marks and Trade Names, p. 21.
140
Case C-49/02 Heidelberger Bauchemie GmbH [2004].
141
Kitchin, D., et al., Kerly's Law of Trade Marks and Trade Names, p. 22.
136
34
The judgment also underlined the fact that the colour or combination of colours are
capable of conveying precise information especially concerning the origin of a product or
service as well as they are capable of distinguishing products or services of one company
from those of another. Nevertheless, the CJEU repeated that “save in exceptional cases,
colours do not initially have a distinctive character, but may be capable of acquiring such
character as the result of the use made of them in relation to the goods or services
claimed.”142
Nowadays OHIM registers several colours per se as Colour Marks in various
categories pursuant to the Nice classification system such as colour lilac for Milka
confectionary packaging,143 colour magenta for T-Mobile telecommunication services144 or
colour orange for labels of Veuve Cliquot Champagne.145
4.1.3 Examples of registrations of colour marks in Member States
Even though the registration of a colour mark per se has been backed up by the
CJEU case law and also several decisions has been taken by the Member States’ national
courts, national trade mark offices still encounter problems when registering such marks.
Although the Singapore Regulations encompass guidelines for the trade mark offices
relating to Colour Marks’ registrations, it is still not clear how an application for
registration of the Colour Mark should look like to avoid undesired vagueness.
Applications that do not claim any particular shape of goods and the representation
of the sign is simply a block of one colour or a combination of colours, and there are no
indications giving rise to the contrary, it should be assumed that the applicant is claiming
that specific colour or combination of colours without any spatial delimitation. However,
majority of the applicants do not specify how vague their sign really is.146
142
Case C-49/02 Heidelberger Bauchemie GmbH [2004], para. 39.
Kraft Foods, CTM 000031336 (Oct. 27, 1999).
144
Deutsche Telekom AG, CTM 212753 (Sept. 9, 2000).
145
Moët Henessy, CTM 00747949 (Mar. 23, 2007) - Registration cancellation currently pending.
146
Kitchin, D., et al., Kerly's Law of Trade Marks and Trade Names, p. 20.
143
35
Slovakia
One of the recent examples is the Industrial Property Office of the Slovak Republic
where at least two Colour Marks registrations were recently made and are in force. Both
registrations are in the field of telecommunications - the first by O2 Holdings Limited147
and the second by Deutsche Telekom AG.148 However, each of the registrations lacks
further specification that a colour per se without being limited to any shapes or contours is
claimed as a trade mark. The required fields in the application serving for classification of
a trade mark as ‘kind of mark’ are limited to the following categories ‘word mark’, ‘picture
mark’, ‘combined mark’ and ‘3d mark’. Therefore, the above mentioned difference
between the Mark Claiming Colour and the Colour Mark is not recognized. Also the
registration of the colour seems rather vague as e.g. in the O2 Holdings Limited
registration, the colour is described as “shades of blue” and even though the numerical
code of the colour is provided, the overall clarity of the official excerpt from the Industrial
Property Office serving mainly to competitors, but also to consumers, is rather
indeterminate.
Given the facts that these registrations are very recent and only one company was
trying to enter the telecommunication market in Slovakia in last ten years, to this day, no
lawsuit for infringement of the trade mark has been brought before the court nor any
opposition proceedings were held before the Industrial Property Office relating to the
Colour Marks. Nevertheless, it is clear to see that the registrations of non-traditional trade
marks are lacking clarity and certainty to the detriment of actual and potential competitors.
Germany
German legislation distinguishes between three groups of marks containing colour.
First two groups protect the colour as a part of a mark either in form of a dependent or an
indirect protection of a colour or a colour combination, or in form of an independent direct
colour protection where colour is a single feature registered apart from the other features of
the mark. The third group, the most interesting for the focus of this paper, gathers an
147
OZ 230667 see more at
http://registre.indprop.gov.sk/registre/detail/popup.do?lang=en&register=oz&puv_id=298647 (visited on
14.7.2015).
148
OZ 231887 see more at
http://registre.indprop.gov.sk/registre/detail/popup.do?lang=en&register=oz&puv_id=297948 (visited on
14.7.2015).
36
absolute abstract protection of a colour or colour combination. Therefore, the Colour
Marks are enjoying protection in Germany without being part of shaped or linear objects or
without contour limitation. The abstract colour trade mark is in practice always put on an
object and thus becomes a concrete appearance when visualised. The first case where the
German Supreme Court held that the colour per se can be protected was Farbmarke
gelb/schwarz.149 This concept of an abstract protection of colour is also recognised by the
revised German Trade Mark Act (Markengesetz) of 1995.150
Therefore, there is no drawing of contours or shapes required to protect the colour
alone in Germany. The only parameter that has to be defined in the graphic representation
of the sign is the colour shade alongside with the respective number thereof in a recognised
colour classification system such as Pantone, RAL, Focoltone, HKS or the like. For a
comparison, the US law gives colours only direct or indirect protection as being part of
a mark either as an inherent part or as a registered single feature, but does not provide for
the absolute abstract protection of the colours as the German law does.151
United Kingdom
A more complex example where the registration of a Colour Mark was at first
granted, but subsequently rejected by the Appeal Court, is Société Des Produits Nestlé S.A.
v. Cadbury UK Ltd.152 At first, the High Court of Justice, Court of Chancery held that a
colour per se could acquire trade mark protection. The UK Intellectual Property Office
registered shade of purple for certain chocolate bars and chocolate drinks. Due to the lack
of inherent distinctiveness, the mark had to prove acquired distinctiveness. The court
acknowledged that even though the acquired distinctiveness of a Colour Mark is to be
proven in a same way as any other mark, the customers could perceive the Colour Marks in
a different way than word marks.153 However, the Appeal Court overturned the decision on
October 2014 ruling that even though the applicant defined the colour using Pantone
colour system, the application form stated that the colour purple wold be the ‘predominant’
149
BGH [1999] G.R.U.R. Farbmarke gelb/Schwarz.
Caldarola, M. C., Questions relating to abstract colour trade marks: recent developments in Germany, pp.
248-249.
151
ibid, p. 250.
152
Société Des Produits Nestlé S.A. v. Cadbury UK Ltd [2012] EWHC 2637 (Ch) (01 October 2012).
153
Laurie, G., et al., Contemporary Intellectual Property: Law and Policy, p. 606.
150
37
colour on the packaging, which would impose an element of uncertainty.154 Therefore, the
application fell short of the necessary precision lacking the required clarity, precision, selfcontainment, durability and objectivity to qualify for registration. The court also argued
that such registration lacking specification would not only be in contradiction with the
principle of certainty, but also “offend against the principle of fairness by giving a
competitive advantage to Cadbury and by putting Nestlé and its other competitors at a
disadvantage.”155
Nevertheless, despite the rejection of Cadbury’s attempt to register shade of purple,
the court did not rule against Colour Mark registration as a whole, but certainly gave
a strong message for future brand owners to think carefully about how clear and specific
their trade mark application is.156
4.1.4 US regulation and case law
The United States traditionally dispose with the highest number of case law relating
to registration of colours. The case law of the US courts is very relevant also for the EU
law and national practice of the Member States as it deals and provides answers and
solutions for registrations of colour trade marks in different industries. Not only it serves as
an inspiration, but regarding the internationality of the intellectual property in itself,
several of the marks seeking for registration in the United States are either already
registered in the European Union or will be applied for therein later on.
Colour marks fall within the regulation of the Lanham Act, which allows
registration of a mark that have become distinctive of the applicant's goods in commerce,
provided that it does not fall under exceptions enumerated in the act.157
154
Norman, H., Intellectual Property Law Directions, p. 377.
Judge Sir John Mummery cited at Browcott, O., Cadbury's Attempt to Trademark Dairy Milk Purple
Blocked, available at: http://www.theguardian.com/business/2013/oct/04/cadbury-dairy-milk-purpletrademark-blocked (visited on 13.7.2015).
156
Browcott, O., Cadbury's Attempt to Trademark Dairy Milk Purple Blocked, available at:
http://www.theguardian.com/business/2013/oct/04/cadbury-dairy-milk-purple-trademark-blocked (visited on
13.7.2015).
157
Vidackovic, V., Christian Louboutin v. Yves Saint Laurent: “Trademark use” Stomps its Red Heels on
“Likelihood of Confusion”, p. 464.
155
38
Until Qualitex158 the United States did not favour registration of colours as trade
marks. The US Supreme Court held that colour is registrable as a trade mark pursuant to
usual conditions set in the Lanham Act upon the condition that it had acquired a secondary
meaning.159 Therefore, the secondary meaning has become of a crucial importance when
registering the Colour Marks in the United States.160 Besides, the Supreme Court went
even further and stated that a trade mark can be “almost anything at all that is capable of
carrying meaning.”161
The court further held that a colour is able to identify and distinguish a particular
brand and is also capable of serving as a symbol while having no further use or purpose.
Therefore, the court concluded that the functionality doctrine does not prevent a single
colour from being registered as a trade mark.162 However, although the decision set the
path for single colour marks registrations, the court also acknowledged that single colour
registrations in the fashion industry might encounter further complications and obstacles,
especially regarding the aesthetic functionality.163
The fashion industry is based on an aesthetic perception of the products and colours
are undeniably one of the main and crucial factor in aesthetic perception of goods.
Therefore in order to avoid colour monopoly or colour depletion, the rules for claiming
a colour as a trade mark in this industry have to be stricter than in other businesses.
The recent Christian Louboutin S.A. v. Yves Saint Laurent America164 case outcome
shows us the current struggle in the fashion industry to claim single colour as a trade mark.
Louboutin has used his famous red lacquered outsole on its expensive women’s shoes
since 1992. YSL, another well-known designer in the highly priced women’s shoes
business, has been manufacturing single coloured high-heels with outsoles in the same
colours as the rest of the shoe design among which also red colour has been used.
158
Qualitex Co. v Jacobson Products Co, 514 U.S. 159 (1995).
Ahuja, V. K., Non-traditional Trade Marks: New Dimension of Trade Mark Law, p. 579.
160
Winckel, E., Hardly a black-and-white matter: Analyzing the validity and protection of single-color
trademarks within the fashion industry, p. 1019.
161
Qualitex Co. v Jacobson Products Co, 514 U.S. 159 (1995).
162
Winckel, E., Hardly a black-and-white matter: Analyzing the validity and protection of single-color
trademarks within the fashion industry, p. 1020.
163
Vidackovic, V., Christian Louboutin v. Yves Saint Laurent: “Trademark use” Stomps its Red Heels on
“Likelihood of Confusion”, p. 465.
164
Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., Docket No. 11-3303-cv (2d Cir. September
5, 2012).
159
39
Louboutin sued YSL for infringement of his trade mark and YSL opposed with claim for
revocation of Louboutin’s red colour trade mark. The case was resolved by the United
States Court of Appeals for the Second Circuit after Louboutin’s appeal. The outcome of
the case seemed at the first sight as a victory for both sides - Louboutin was allowed to
keep his red colour trade mark and the infringement claim against YSL has been dismissed
and YSL was allowed to continue manufacturing and marketing its monochromatic shoes.
Louboutin was able to prove that the red sole of its products has acquired a secondary
meaning as a symbol that consumers associate with its brand. However, the court argued
that the aforementioned applied only to the contrast between the sole and the upper part
and only the contrasting red soles had capability of distinguishing Louboutin’s products
from others.165
However, the decision has been criticized in the academic world that it provided us
with a rather unclear solution leading to contradictoriness. One of the main arguments
criticizing the outcome of the case is that “Louboutin as the owner of the trade mark
should have the ability to seek protection against potential infringers whose products
might be confusingly similar.”166 The court did not determine nor did ponder about the
issue at all whether there existed a likelihood of confusion between the shoes of Louboutin
and those of YVS.167
4.2
Practical issues arising from registering colours as trade marks
Colours dispose with a very strong visual power to affect the choices of customers.
Does then the protection of a Colour Mark claimed by a single entrepreneur give too much
power and monopoly to the applicant and hence hinder fair competition? There is a variety
of colours at the disposal, but the selection is limited to a certain number. Of course, there
are several shades of colours at disposal, but we have to take into account also the
likeliness of confusion of the customers in case that shades of the same colour are
trademarked for different companies in the same industry. If the other companies are not
able to convey their ideas through free use of colours, they may be placed at a
disadvantage with consumers. Therefore, the risk of depletion should always be taken into
Vidackovic, V., Christian Louboutin v. Yves Saint Laurent: “Trademark use” Stomps its Red Heels on
“Likelihood of Confusion”, pp. 467-468.
166
ibid, p. 485.
167
See more at ibid, pp. 472-474.
165
40
account when considering an application for a Colour Mark regarding the fact that the
amount of colours is not infinite.168
Advocate General Ruiz-Jarabo Colomer argued in his Advisory opinion to
Sieckmann169 that a general statement that sight is the most developed of senses would be
difficult to withstand. Despite the fact that vision is a strong stimulant for memory and
identification, the human eye is limited in its perception of colours just as is the human
ability of the sense of smell to perceive odours. The Advocate General went even further
by claiming that “a description of a colour can be just as inaccurate and difficult as that of
an odour.”170 According to M.D. Rivero González, human eye distinguishes only among
three or four shades of the same colour without likelihood of confusion and an average
consumer cannot differentiate between closely related or similar colours. He provided an
example by referring to a situation when a person “is confronted with a catalogue of paint
colours as used by a hardware shop, selecting a particular colour (pink, green or blue)
from amongst the various shades (spread over 20 or 30 cards) is a real problem.”171
A contrasting opinion had been issued by INTA before, pointing at the landmark
Qualitex decision172 where the US Supreme Court ably addressed the objection of colour
shade confusion by ruling that it does not pose any more serious potential for likelihood
confusion than the one arising among more traditional marks such as word marks.173
However, the truth lies somewhere in between these two contrasting points of view.
The largest colour specification system Pantone registers many shades of colours, which
are truly impossible to distinguish between with regular human vision, especially
considering ‘the average consumer’ point of view that the courts like to rely on in their
168
Londesborough, S., Should Colours be protected by trade mark law? What problems may arise in
Protecting them?, pp. 14-16.
169
Opinion of Advocate General M. D. Ruiz-Jarabo Colomer [2001] in Case C-273/00 Sieckmann v
Deutsches Patent- und Markenamt [2003].
170
ibid, para 27.
171
González, R., Los problemas que presentan en el mercado las nuevas marcas cromáticas y olfativas,
Revista de Derecho Mercantil, No 238, Madrid, October-December 2000, p. 1673 cited in ibid, para 27,
footnote 31.
172
Qualitex Co. v Jacobson Products Co, 514 U.S. 159, 161, 163, 115 S. Ct. 1300, 131 L.Ed. 2d 248 (1995).
173
http://www.inta.org/Advocacy/Pages/ProtectabilityofColorTrademarks.aspx (visited on 22.7.2015).
41
decisions. Pantone registers even such peculiarities as ‘Coke red’, ‘Starbucks emerald
green’ or the latest novelty ‘Minion yellow’ shade.174
This ‘shade confusion’ encounter has already made its way into courtrooms. Apart
from the above-mentioned 10-year Cadbury vs. Nestlé battle over the use of deep purple
colour for confectionary in the UK,175 other famous encounters occurred unsurprisingly in
the USA that never comes short of lawsuits. T-Mobile US, a Deutsche Telekom subsidiary,
has become famous for suing anyone coming close to its magenta shade by filing a trade
mark infringement and dilution lawsuit against a company offering completely different
kind of services Engadget Mobile. Surprisingly, Engadget was actually one of the
companies, which defended T-Mobile’s use of magenta an year before.176 Later on, in 2014
T-Mobile accused an AT&T subsidiary Aio-Wireless of trying to free-ride on its success
by copying its magenta.177 Despite the fact that Aio-Wireless was using a completely
different shade of maroon, the lawsuit was successful and Aio-Wireless was forced to
change their brand colour to a slightly richer red.178
Therefore, even once the registration is granted problems may arise while handling
it. The perception of the same colour or shade of colour can differ from person to person
and the colour can even appear diversely on different backgrounds or materials.179
Therefore, the likelihood of confusion between similar shades of colours is a true problem
and should not be overlooked as it will result in further infringement cases in the future.
The current practice is to allow the registration of Colour Marks in cases where
customers are able to associate the colour with the brand as a whole. Such marks are
capable to provide the main functions of a trade mark i.e. to serve as a source of origin as
174
Wainwright, O., Meet Minion Yellow by Pantone: the world's first character-branded colour, available at:
http://www.theguardian.com/artanddesign/2015/jul/16/meet-minion-yellow-by-pantone-the-worlds-firstcharacter-branded-colour?CMP=share_btn_fb (visited on 28.7.2015).
175
Société Des Produits Nestlé S.A. v. Cadbury UK Ltd [2012] EWHC 2637 (Ch) (01 October 2012).
176
Callil, J., Meet Pantone, The Company That Owns Almost Every Colour You Can Imagine, available at:
http://junkee.com/meet-pantone-the-company-that-owns-almost-every-colour-you-can-imagine/46819
(visited on 28.7.2015).
177
T-Mobile US, Inc. v. Aio Wireless LLC, Case No. H-13-2478 (S.D. TX).
178
Callil, J., Meet Pantone, The Company That Owns Almost Every Colour You Can Imagine, available at:
http://junkee.com/meet-pantone-the-company-that-owns-almost-every-colour-you-can-imagine/46819
(visited on 28.7.2015).
179
Kur, A., Strategic Branding: Does Trade Mark Law Provide for Sufficient Self Help and Self Healing
Forces?, p. 212.
42
well as they are capable of distinguishing products or services of one entrepreneur from
another.
As a general rule, the less likely the usage of the colour in the respective industry is,
the higher is the chance to successfully apply for registration of such Colour Mark. For
example the registration of colour pink in the insulation products by Owens-Corning.180 In
this case, the colour has no functionality and it is not an obvious choice in the house
construction industry as the usual and normally used colours of insulation are white,
yellow or grey.181
Therefore, the more unusual and original the colour is considered in the respective
business, the more likely it can be claimed as a trade mark. However, what about new
products where the colours have not been used for a period of time long enough to decide
which colours are typical in such business? For example, Apple started to use various
surface colours for their MacBook while so far the usual colour design of laptops has been
black, grey or white. Would be Apple able to register colour trade mark for their laptops?
Most probably, the secondary meaning would be missing at the present time as the usage
has not been long enough for the customers to associate certain colour with the Apple
brand. Newer industries are reviewed analogically as the closest industries available. In the
case of computers' industry, the telecommunications industry can serve as an example. So
far, several companies were able to register single colours for their products and services in
telecommunication business e.g. Deutsche Telekom registered its magenta at OHIM
as CTM as well as a trade mark in several Member States where it provides its services.182
Claiming of a single colour as a trade mark concentrates a significant monopoly
power in the hands of the claimant and inflicts limits to free competition. As a result of
such a strong position on the market being at stake, the rules for registration of such trade
mark have to be stricter than in cases of claiming different types of marks. The colour
needs to represent the brand so expressly that consumers are associating the colour not
with the product, but with the brand itself. Proving of an acquired distinctiveness, or even
strongly, secondary meaning, means that the company’s marketing has reached level where
180
In Re Owens-Corning Fiberglass Corp., 774 F.2d 1116 (1985).
Ahuja, V. K., Non-traditional Trade Marks: New Dimension of Trade Mark Law, p. 578.
182
Caldarola, M. C., Questions relating to abstract colour trade marks: recent developments in Germany, pp.
253-254.
181
43
the colour is in practice considered to be owned by the company from the consumers’
perspective regardless of its registration. However, if the Colour Mark becomes generic i.e.
consumers associate any product within the industry with the name of the brand, the trade
mark protection cannot be granted. Hence the monopoly power expires and bounces back
as a ‘tax for the notoriety’ of the mark.
Doctrine of functionality serves as another tool of protection against vile
registration of colours to the detriment of other competitors. According to WIPO’s
recommendations, a colour may be regarded as being a functional feature of the product or
service if it serves to provide a particular technical result for the goods or services
concerned. Furthermore, WIPO provides examples where the particular colour has a
technical meaning for the product or service e.g. the colour black for solar power collectors
and associated piping, the colours silver or white in situations where heat or light reflection
is required or a silver colour for building insulation sheeting to go under roofing tiles.183
However, the functionality doctrine does not have to be an absolute bar for single
colour registrations as seen in Qualitex.184 Analysing functionality is very industry specific
and it is essential to evaluate it in the context with other products or services in the
respective field. Federal District Court in California in Acacia185 dismissed a claim for
registration of single colour orange in medical devices. The court held that the colour
orange for various markings and text on its medical syringe product could not be protected
as a trade mark, because the colour has been considered as functional when applied to that
product. The colour orange has been regarded as having functional purpose in the medical
industry, namely, to signify that a device is for oral, use. It is therefore crucial to know the
industry where you apply for a trade mark, because if colour red had been claimed for the
medical devices in the above mentioned case, the claim would probably not have been
rejected on the grounds of finding of functionality.186
183
http://www.wipo.int/export/sites/www/sct/en/comments/pdf/sct17/au_1.pdf (visited on 20.7.2015).
Qualitex Co. v Jacobson Products Co, 514 U.S. 159, 161, 163, 115 S. Ct. 1300, 131 L.Ed. 2d 248 (1995).
185
Acacia Inc. v. Neomed Inc., Case No. 8:11-cv-01329-JST-AN, C.D.Cal. 7/23/12.
186
Neuberger Weller, S., When Can You Claim a Color as Your Trademark?, available at
http://www.mintz.com/newsletter/2012/Advisories/2243-0912-NAT-IP/index.html (visited on 9.4.2015).
184
44
As can be seen in Louboutin,187 in some industries, such as fashion industry, the
colour carries a functional aspect of the brand conveying the aesthetical message to
consumers and attracting their attention by aesthetical appearance of a product. Therefore,
colours are perceived as essential parts of the fashion business and hence it is extremely
difficult to attain balance between the owner of a Colour Mark and other competitors in the
industry.
Last, but not least, a moral aspect of ‘owning a colour’ should be taken into
account. Whether this is an issue or not depends on the position one is backing on the
market. Colours has proven beyond doubt to be capable of conveying strong marketing
message for the brand owner, but on the other hand, Colour Marks also accumulate
a monopoly for the respective colour in hands of one entrepreneur limiting the real or
potential competition. A shining example for another damaging step in the privatisation of
colours is Pantone’s branding of respective shades of colours as ‘Coke’s red’, ‘Starbuck’s
emerald green’ or ‘Minion Yellow’.188
4.3
Will the proposed abandonment of the graphic representation affect the
registration of colour marks?
Colour Marks have already been accepted as being capable to serve as sources of
origin and being able to provide distinctiveness from other entrepreneurs on the respective
market in several jurisdictions among them the European Union and the United States. The
EU case law and the following practice for colour registration are rather clear and stable.
Colour marks depicted graphically with written description containing numerical code of
the respective shade(s) from an internationally accepted colour database are continuously
being used by the applicants and accepted by OHIM and national register authorities.
Since Colour Marks are the only visually perceptible marks among the sensory
marks, their graphical representation has never been such an obstacle as when it comes to
other sensory marks. Moreover, their graphic representation makes much more sense,
because a mere description, however precise and fulfilling of other criteria, without
187
Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., Docket No. 11-3303-cv (2d Cir. September
5, 2012).
188
Wainwright, O., Meet Minion Yellow by Pantone: the world's first character-branded colour, available at:
http://www.theguardian.com/artanddesign/2015/jul/16/meet-minion-yellow-by-pantone-the-worlds-firstcharacter-branded-colour?CMP=share_btn_fb (visited on 28.7.2015).
45
a graphic sample would not be sufficient for other traders, the examining attorney of the
register nor for the consumers to clearly understand what the protected sign truly consists
of. Furthermore, the omission of the graphical representation requirement form the
definition does not mean that the traders should not use it where it is appropriate, which in
case of colours is more than apt.
However, several issues still remain unclear and vague even after the colour is
already registered as a trade mark. Despite the fact that the applicant has to provide an
exact description of a colour together with numerical code in recognised colour
classification code, the consumers’ confusion between similar shades of colour remains
a real issue in practice. Surprisingly, the courts have not been focusing on this issue and
consumer protection is regarded as secondary with respect to protection of competition.
46
5
Sounds
Sounds possess an ability to leave a deep impression through our echoic memory.
A sound can serve as a powerful and immediate indicator of trade mark origin, which is
well-documented by the fact that we are indeed surrounded by various uses of types of
sounds in commercials. Moreover, sounds are capable of breaking language barriers and
conveying trade messages beyond languages. Music especially is the most influential
known type of sound affecting human emotional state and thus has a powerful effect on
consumers’ behaviour. Therefore, opting for sounds to capture consumers’ attraction
appears to be a smart business strategy. However, while in the USA sound mark
registration became trite, the CTM seekers still have to struggle with the graphic
representation impediment, which makes it particularly hard for sounds not representable
by musical notation.189
Out of all sensory marks, sound marks are probably the ones that are being the most
unjustifiably oppressed by the imposed obstacle of graphic representation. Would it not be
much more understandable for consumers to be able to hear a sample of the sound mark for
tracing the source of origin than from reading music notes with further text explanation?
Similarly, the competitors can avoid the likelihood of confusion more easily by capturing
the distinctiveness of the sound mark through actually listening to the sample of the sound
mark.
5.1
Overview of current legislation and important case law concerning
registration of sound marks
5.1.1 International regulation
Registration of sounds as trade marks is not a novelty on the market. Likewise as in
case of scent marks, Article 15 of the TRIPS Agreement does not expressly mention
sounds, but allows them, as signs with the capability to convey a message of commercial
189
Trillet, G., Registrability of Smells, Colors and Sounds: How to Overcome the Challenges Dressed by the
Requirements of Graphical Representation and Distinctiveness within European Union Law, available at:
http://www.ecta.org/IMG/pdf/garry_trillet_-_registrability_of_smells_colors_and_sounds.pdf (visited on
23.7.2015), pp. 14-16.
47
origin, to be registered as trade marks. The user association INTA expressed its support for
sound marks already in 1997.190
Similarly as with colours, the Singapore Treaty together with the Singapore
Regulations expressly recognizes sound marks as types of trade marks. WIPO thereby
established framework criteria for sound marks’ representation required for their
registration:
“Where the application contains a statement to the effect that the mark is a sound
mark, the representation of the mark shall, at the option of the Office, consist of a musical
notation on a stave, or a description of the sound constituting the mark, or an analog or
digital recording of that sound, or any combination thereof.”191
The Singapore Regulation framework is less strict than the CTM regulation.
Pursuant to the EU case law, a mere description, sound recording or a musical notation on
stave just by themselves would not currently be sufficient due to the graphic representation
criterion.
5.1.2 EU regulation and case law
The core decision for sound marks in EU was delivered in Shield Mark192 where the
CJEU interpreted the trade mark criteria in light of its previous rulings in Sieckmann193 and
Libertel.194 The Court ruled that the requirements for graphic representation of a sign
stipulated in the previous judgments, especially the Sieckmann Seven, were not satisfied
by “a description such as the notes making up a musical work, an indication that it was a
cry of an animal, a simple onomatopoeia nor a sequence of musical notes.”195 On the other
hand, the Court stated that where a “sign is represented by a stave divided into measures
and showing in particular, a clef, musical notes, and rests whose form indicated the
190
Protectability of Sound Trademarks, available at:
http://www.inta.org/Advocacy/Pages/ProtectabilityofSoundTrademarks.aspx (visited on 24.7.2015).
191
Regulations under the Singapore treaty on the law of trademarks, 2011 (WIPO), Rule 3(9).
192
Case C-283/01 Shield Mark BV v Joost Kist [2004].
193
Case C-273/00 Sieckmann v Deutsches Patent- und Markenamt [2003].
194
Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2004].
195
Laurie, G., et al., Contemporary Intellectual Property: Law and Policy, p. 583.
48
relative values and, where necessary, accidentals,”196 the criteria for the sign to be
represented graphically are satisfied. Therefore, musical notes can serve as a graphic
representation for a sound mark as long as they are correctly represented. 197 Moreover, in
order to be able to read the music score, you need certain ability, an ability that, as noted
by the Advocate General Ruiz-Jarabo Colomer in Shield Mark,198 not everyone possesses,
but an ability that could be acquired through time since there is no requirement that the
comprehension of the mark has to be immediate.199 In addition, the Advocate General
opined that not all categories of sound marks would be able to surpass Sieckmann Seven
excluding those incapable to be represented by musical.200
Pursuant to OHIM decision of 2005,201 the applicants may attach a sound file to
electronic or online trade mark application forms. The attachment can consist of only one
sound file in MP3 format, cannot exceed one megabyte and must not allow loops or
streaming. The decision was driven by the aim to further clarify and support the sound
marks applications. INLEX IP Expertise202 was the first applicant using this option to
successfully register its sound mark at OHIM.203
United Kingdom
The Shield Mark204 casts a serious shadow of doubt over some previously accepted
trade marks in the Member States. The UK Trade Marks Office records an example of a
registered sound mark consisting of an animal sound. Imperial Chemical Industries were
able to register a sound mark consisting “of the sound of a dog barking”205 in 1995. The
mark’s vagueness would most probably cause its invalidity upon being challenged. The
description leads the public, including competitors, into subjective interpretation, failing to
provide any information on what kind of barking it is. Is it loud? How long is it? Is the
196
Case C-283/01 Shield Mark BV v Joost Kist [2004], para 64; see also Laurie, G., et al., Contemporary
Intellectual Property: Law and Policy, p. 583.
197
Laurie, G., et al., Contemporary Intellectual Property: Law and Policy, p. 583.
198
Opinion of Advocate General Ruiz-Jarabo Colomer [2003] in Case C-283/01 Shield Mark BV v Joost Kist
[2004].
199
Burrel, R., Handler, M., Making Sense of Trade Mark Law, p. 397.
200
ibid, p. 391.
201
Decision No. EX-05-3 of the President of the Office concerning electronic filing of sound marks, 10
October 2005, available at http://oami.europa.eu/en/office/aspects/pdf/ex05-3.pdf (visited on 20.7.2015).
202
CTM 004901658 (Apr. 11, 2007).
203
http://www.wipo.int/wipo_magazine/en/2009/01/article_0003.html (visited on 12.8.2015).
204
Case C-283/01 Shield Mark BV v Joost Kist [2004].
205
UK Trade Mark No. 2007456.
49
barking friendly or aggressive? The description not only lacks precision necessary for other
traders to grasp what the trade mark really consists of, but also makes it impossible to
prove an infringement of the trade mark.206 Such trade marks are completely ambiguous
and unclear and would have certainly failed Sieckmann Seven if filed for registration after
the landmark decision.
5.1.3 US regulation and case law
The principal regulation of trade marks is covered by the Lanham Act, which does
not exclude sounds from being able to function as trade marks. However, the Lanham Act
provides us only with the framework regulation and the actual issues related to registration
of sounds as trade marks can be found in the case law of both US courts and TTAB.
Similarly as with other sensory marks, the US case law is much richer than that of EU
when it comes to sound marks. That certainly has to do with the fact that the US system is
in general more benevolent for registering of sound marks.
The first sound mark ever accepted by USPTO was registered already in 1971.
NBC’s successful registration consisting of the musical notes G, E, C played on chimes for
its television broadcasts207 became the first trademarked audio sample. Sound mark
registration became a routine over the years in the USA, but such predictions that a sound
mark overflow was about to burst forth were tamed. The USPTO database currently lists
582 records of trade marks that could not be represented with a drawing,208 which among
others comprise also sound marks. Considering the amount of hundreds of thousands of
registered trade marks, the number of successful sound trade mark registrations can give
you the idea of the difficulty of the whole process calming the popularity thereof among
traders.209
The main criteria for a sound to acquire trade mark protection are similar to those
of CTM. TTAB stipulated in its In re General Electric Broadcasting Co Inc. decision that
whether a sound mark can be registered as a trade mark “depends on [the] aural perception
of the listener which may be as fleeting as the sound itself unless, of course, the sound is so
206
Bainbridge, D., Intellectual Property, p. 675.
U.S. Reg. No. 0,916,522 (July 13, 1971).
208
As of 1.8.2015. The records include marks that have been abandoned.
209
Sweeney, D., Can You Trademark a Sound?, available at: http://www.huffingtonpost.com/deborahsweeney/can-you-trademark-a-sound_b_5635571.html (visited on 28.7.2015).
207
50
inherently different or distinctive that it attaches to the subliminal mind of the listener to be
awakened when heard and to be associated with the source or event with which it
struck.”210 Accordingly, the sound has to be a source identifier, non-functional and
distinctive. As opposed to the CTM the sound mark does not have to be represented
graphically.
Therefore, the main difference between US trade marks and CTMs lies in the
means of representations accepted by the register authorities. According to USPTO, sound
marks belong into the category ‘marks that could not be represented with a drawing.’
Graphic representation is not necessary and various forms of representation have been
accepted by USPTO. Several types of graphic representations consisting of e.g. only
written description, onomatopoeia or musical notation, which were rejected in the EU as
not fulfilling the criteria, are being accepted in the USA.211 Examples of sound marks that
would have been problematic to register as CTMs include the roar of the MGM lion,212 the
famous Tarzan yell,213 the giggle of the Pillsbury Doughboy,214 the deep “ho, ho, ho” of
the Jolly Green Giant,215 and the quack of the duck by AFLAC insurance company,216
which all have been granted trade mark registration in the USA. Similarly, it would be
interesting to compare the USPTO’s and OHIM’s approach in evaluation of the recent
Procter & Gamble attempt to register the whistle characteristic for their Old spice products
at the USPTO217 if similar application would have been filed at OHIM, especially after,
and if, the abandonment of the graphic representation comes through.
Maybe the most famous example documenting that in spite of more sensory mark
friendly requirements, even in the USA one has to fight fiercely by proving distinctiveness
and shun functionality in order to obtain a registration of a sound mark in the trade mark
register, is that of Harley-Davidson.218 In 1994 an application to register the sound of
210
In re General Electric Broadcasting Co., 199 USPQ 560, 563 (T.T.A.B. 1978).
Roth, M., Something Old, Something New, Something Borrowed, Something Blue: A New Tradition in
Nontraditional Trademark Registrations, pp. 482-483.
212
U.S. Reg. No. 1,395,550 (June 3, 1986).
213
U.S. Reg. No. 2,210,506 (Dec. 15, 1998).
214
U.S. Reg. No. 2,692,077 (March 4, 2013).
215
U.S. Reg. No. 2,519,203 (Dec. 18, 2001).
216
U.S. Reg. No. 2,607,415 (Aug. 13, 2002).
217
http://www.trademarkologist.com/2014/03/adventures-in-trademarking-a-sound-the-old-spice-whistle/
(visited on 29.7.2015).
218
Anderson, C., Baseer, N., Jones, P., Strategic Intellectual Property Protection in Franchise Systems:
Beyond Trademark Registration, p. 7.
211
51
Harley-Davidson motorcycle engine described as “the exhaust sound of applicant’s
motorcycles, produced by V-twin, common crankpin motorcycle engines when the goods
are in use.”219 was filed. The applicant claimed that the “syncopated, uneven idle,
simulated verbally, sounds like “poTAYto-poTAYto-poTAYto”220 and the exhaust sound has
become a brand identifier of their motorcycles. Harley-Davidson’s competitors were of a
different opinion and opposed the application by stating that the sound applied for trade
mark registration does neither have uniqueness nor distinctiveness when compared to the
sound of other engines.221 Apart from the contingent distinctiveness, TTAB pointed to a
potential functionality of the sound that could be found if the case were to proceed to a
trial. TTAB questioned whether the sound is not a mere functional side product of
motorcycle engines, which the competitors claim a right to use.222 However, what looked
as a promising pioneer case concerning evaluation of sound marks from the functionality
aspect did not proceed to the trial in the end. After a six-year struggle, Harley-Davidson
eventually withdrew its application.223
In spite of not being a sound mark case, but another sensory mark – taste mark case,
In Re N.V. Organon224 provided an analysis of one of the key issues relating to nontraditional marks – functionality of the promoted feature. TTAB found the flavour to be
functional and stressed that the evaluation of ‘competitive need’ is a crucial part of the
functionality analysis. In addition, marketing of the sound solely in terms of its function as
opposed to a source of origin poses a risk for trade mark seekers of barring the registration
on the grounds of functionality.225 Similarly, the utility benefit of the sound for the goods
or services in question could be considered as functional.
The test of distinctiveness for sound marks was applied in In re General Electric
Broadcasting Co Inc.,226 where the General Electric’s fought (unsuccessfully) for
trademarking of the sound of a ship’s bell for radio broadcasting services. TTAB admitted
219
U.S. App. Serial No. 74,485,223 (filed Feb. 1, 1994).
ibid.
221
Anderson, C., Baseer, N., Jones, P., Strategic Intellectual Property Protection in Franchise Systems:
Beyond Trademark Registration, p. 7.
222
Gabrielides, J., Williams, T., The Sound of Unconventional Marks in the United States, p. 95.
223
Anderson, C., Baseer, N., Jones, P., Strategic Intellectual Property Protection in Franchise Systems:
Beyond Trademark Registration, p. 7.
224
In re N.V. Organon, 79 U.S.P.Q.2d 1639 (T.T.A.B. 2006).
225
Gabrielides, J., Williams, T., The Sound of Unconventional Marks in the United States, p. 94.
226
In re General Electric Broadcasting Co Inc. 199 USPQ 560 (TTAB 1978).
220
52
that sound marks are in general capable of functioning as source indicators, but in
“situations where they assume a definitive shape or arrangement and are used in such a
manner so as to create in the hearer’s mind an association of the sound with a service.”227
TTAB denied the registration due to applicant’s failure to prove that the ship bell’s sound
served as a source of origin and that consumers identified it with its radio station.228
Furthermore, the US courts has also dealt with the encounter between trade mark
and copyright protection mainly from the perspective of simultaneous protection and
capability to stand as a source identifier of products. As to the former aspect of
simultaneous protection, the court ruled in Oliveira v Frito Lay, Inc. that “the fact that
musical compositions are protected by the copyright law is not incompatible with their
also qualifying for protection as trademarks.”229 That said, the recording cannot simply act
as a trademark for itself but has to indicate the source of other goods or services. The court
underlined in GML Inc v Mayhew230 the main function of trade mark and stated that in
order to function as a trade mark the sound recording has to indicate the source of the
goods or services as opposed to just being the goods or services seeking for protection.231
Therefore the court pointed to the copyright protection as being more suitable for the case
by stating that “[t]he sound recordings in this case do not indicate the source of the goods;
they are the goods”232 and that “the musical recordings do not signify the plaintiff’s
ownership rights; rather, they are the product that is owned.”233
5.2
Practical issues arising from registering sounds as trade marks
After the Shield Mark234 ruling musical tunes have been in general easier to protect
than before in the EU. The Court established that musical notation is sufficient to meet the
graphic representation requirement. However, when it comes to other sounds such as
animal sounds or mere noises, which could not be appropriately depicted using musical
notation, the registration thereof as CTMs might be demanding. The CJEU made clear that
mere worded descriptions of sounds did not meet the graphic representation requirement.
227
In re General Electric Broadcasting Co Inc. 199 USPQ 560 (TTAB 1978).
Gabrielides, J., Williams, T., The Sound of Unconventional Marks in the United States, p. 95.
229
Oliveira v Frito-Lay Inc., 251 F3d 56 (2d Cir 2001).
230
GML Inc v Mayhew, 188 F Supp 2d 891 (MD Tenn 2002).
231
Gabrielides, J., Williams, T., The Sound of Unconventional Marks in the United States, p. 94.
232
GML Inc v Mayhew, 188 F Supp 2d 891 (MD Tenn 2002).
233
ibid.
234
Case C-283/01 Shield Mark BV v Joost Kist [2004].
228
53
The problem of representing non-musical sounds could be partly solved by using i.e.
sonogram of sounds or spectrogram. Even though the CJEU has not so far dealt with other
means of graphic representation of sounds,235 such as images of sound waves, OHIM
accepts sonograms of sounds or spectrograms as a graphic representation, if accompanied
by sound file representing the sound itself.236
In spite of the fact that pursuant to Shield Mark237 musical score, duration time and
detailed description satisfy the strict criteria for sign representation, following the
reasoning in Sieckmann238 that chemical formulas are not clear and comprehensive for the
public,239 the ability to understand musical score depicting the sound marks could pose
a problem. An example of a CTM that was registered until its expiration in 2011 satisfying
the EU trade mark criteria is sound mark of AB Electrolux for lawnmowers and vacuum
cleaners. Alongside with a musical score, duration time a very detailed description: “the
sound of the trade mark consists of the tones above with a deviation as noted in the chart
below where each tone is defined in Hz. – n°1: 1100Hz – tone C#;n°2: 1450Hz – tone
F#;n°3:1800 Hz – tone A. seconds“240 was provided. In spite of the fact that the provided
description was indeed very detailed, unless one had acquired certain musical knowledge,
it is very hard to imagine what kind of sound is trademarked.
Another issue is whether also whole songs can enjoy trade mark protection.
Although short sequences used as a marketing tool or theme songs can be registered as
trade marks, the sound, especially in the form of music, is typically protected by a different
IP law instrument – copyright. The main advantage of trade mark protection is that it stays
active if being maintained by usage and register renewals as opposed to the copyright,
which falls to the public domain 70 years after creator’s death. 241 In EMI Catalogue P’ship
v. Hill, Holliday, Connors, Cosmopulos Inc.242 the US Second Circuit held that entire
songs do not enjoy trade mark protection. The court has reasoned that to allow a trade
mark protection of whole songs would not only mean excessively stretching the trade mark
235
Other means than those dealt with in Shield Mark.
Knaak, R., Venohr, P., Study on the Overall Functioning of the European Trade Mark System, p. 66.
237
Case C-283/01 Shield Mark BV v Joost Kist [2004].
238
Case C-273/00 Sieckmann v Deutsches Patent- und Markenamt [2003].
239
ibid, para 69.
240
CTM 002510345 (June 17, 2004) [expired].
241
Sweeney, D., Can You Trademark a Sound?, available at: http://www.huffingtonpost.com/deborahsweeney/can-you-trademark-a-sound_b_5635571.html (visited on 28.7.2015).
242
EMI Catalogue P’ship v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56 (2d Cir. 2000).
236
54
definition, but it would simply go too far granting trade marks a role in protecting the core
of the song, which would be an undesired interference with the copyright law that is
already protecting the music.243 However, the practise has not really been that harsh for
sound marks applicants in the USA especially when it comes to registration of theme
songs. For instance, a basketball team called the Harlem Globetrotters were able to register
their theme song ‘Sweet Georgia Brown’. The length of the deposited sample
accompanying the registration is 2 minutes 50 seconds, hence not exactly a short sequence,
but rather a sample of the whole song.244
Subsequently, even after successfully passing the first hurdle of registration of the
sound mark in the trade mark register, the protection is not always that easy to gain and it
can be quite difficult to enforce a registered sound mark at the court. The US case Ride the
Ducks LLC v Duck Boat Tours Inc.245 demonstrates that obtaining a trade mark registration
does not automatically guarantee success in infringement claims. Ride the Ducks registered
a sound mark consisting of “of a quacking noise made by tour guides and tour participants
by the use of duck call devices through various portions of the tour”246 for their tour guide
services. Ride the Ducks sued Duck Boat Tours, a company also providing tours in
Philadelphia and using ‘quacking noise’, for infringing their sound mark stating that there
is a likelihood of confusion for the current or potential customers of Ride the Ducks. The
court acknowledged the difference between inherently distinctive sounds such as the duck
quacking “AFLAC”247 and more commonplace sounds such as simple animal sounds. The
latter group has to acquire secondary meaning in order to become a trade mark i.e. the
sound has to be associated exclusively with a single source by the consumers. Even though
the ‘quacking sound’ was granted registration in the Principal register, neither the an
inherent distinctiveness nor secondary meaning were proved. Hence, the court did not even
consider the possibility of likelihood of confusion since the evidence submitted by the
sound mark owner did not show that the quacking noise had actually become its trade
mark. Therefore, since the court did not even recognize the distinctiveness of the sound
243
Anderson, C., Baseer, N., Jones, P., Strategic Intellectual Property Protection in Franchise Systems:
Beyond Trademark Registration, p. 42.
244
U.S. Reg. No. 1,700,895 (July 14, 1992) sample available at:
http://www.uspto.gov/trademarks/soundmarks/74158626.mp3.
245
Ride the Ducks, LLC v. Duck Boat Tours Inc., 75 U.S.P.Q 2d (E.D. Pa. 2005).
246
US Reg. No. 2,484,276 (Sept. 4, 2001).
247
U.S. Reg. No. 2,607,415 (Aug. 13, 2002).
55
mark, it was not surprising that the trade mark was not found to be ‘famous’ and the court
did not even ponder about the second claim of dilution.248
5.3
Will the proposed abandonment of the graphic representation affect the
registration of sound marks?
Out of all sensory marks, the sound marks could be the ones benefitting the most
out of the abandonment of graphic representation. As mentioned above, the sound marks
could be much better perceived both by competitors and by consumers through actual
hearing of the trademarked sound. The visual representation of the sound currently serves
only to those, who are capable of reading musical score, spectrograms, sonograms or other
proficiency demanding representations of sounds.
Considering the use of technologies that are already available, it is easy to see how
the graphic representation criterion removal would make the life of sound marks easier.
Just by a simple deposition of a sound file through an online trade mark application
system, the applicant could relatively easily get his trade mark registered instead of having
to focus on how to satisfy the graphic representation requirement.249
That said, there are still certain worries concerning trade mark searches in the
register that are necessary to perform in order to establish whether there are any earlier
rights or whether the trade mark being applied for registration might give rise to a
likelihood of confusion. Providing such searches and comparisons by using solely sound
depositions could prove to be difficult and unclear for both competing traders and
examining authorities. Therefore, the current absence of corresponding administrative tools
in the register databases might lead into a practical conclusion that the graphic
representation of a mark, albeit limiting the extent of registrable sound varieties, might in
fact prove to be a more apt option for ensuring legal certainty.250
248
http://www.trademarkologist.com/2015/01/ducking-it-out-in-philadelphia/ (visited on 1.8.2015).
Devaney, M., The Future for European Non-traditional Trade Marks, available at:
http://www.gje.com/Pub_docs/IPM-June_2011_Feat.pdf (visited on 24.7.2015); see also Knaak, R., Venohr,
P., Study on the Overall Functioning of the European Trade Mark System, p. 67.
250
Gérard, A., The Proposal to Delete the Requirement of Graphical Representation of a Trade Mark
Registered in the European Union, available at https://ipcopy.wordpress.com/2014/01/24/the-proposal-todelete-the-requirement-of-graphical-representation-of-a-trade-mark-registered-in-the-european-union/
(visited on 17.7.2015).
249
56
Even so, the search problem could be nowadays quite easily overcome by using
computer generated full frequency plot for comparison of respective sound files.251 The
available modern technologies enable the traders to conduct more advanced searches on
their own even in cases where the register database itself might not provide for such tools.
Hence, the risk of jeopardizing of legal certainty is not so imminent.
In addition, even though the requirement of graphic representation of the sign shall
be abandoned, it does not mean that the trade mark owner would not be able to also
provide the register with a visual representation and/or a written description of the sign.
The graphic representation could still serve for better understanding of what is covered by
the trade mark protection and thus make the registration ‘clearer’, ‘more precise’ and ‘selfcontained.’
Since out of all sensory marks, the sound marks would probably benefit the most
out of the proposed abandonment of graphic representation, the US experience can come
especially handy for assessing potential queries related to sound marks. USPTO has never
required the sign representing a sound to be represented graphically, and has thus dealt
with and managed a database of different kinds of non-visual representations. Similarly,
the US trade mark infringement cases can serve as inspiration for deciding similar ones in
the EU.
251
http://www.inta.org/Advocacy/Pages/ProtectabilityofSoundTrademarks.aspx (visited on 24.7.2015).
57
6
Touch
“The sensation of touch can be healing, relaxing, or stimulating.”252 Considering
that touch is the first sense developed in the womb and the last one used before death, the
sensation of touch is arguably the most intimate among the senses. Unlike scent or taste,
sensation of touch is not clouded by subjectivity and often serves as a proof when a person
cannot believe his or her eyes or ears.253 The texture and feeling can attract consumers’
attention and affect their perception of quality of the trademarked goods or services.254
However, the touch mark, known also by the names tactile, texture, feel, haptic or
palpable mark, has attracted a very little of entrepreneurs’ interests insofar, which is
somewhat surprising given its unique characteristics and capability to create an intimate
and emotional connection with a brand.255 Up to now, the tactile marks seem to be most
attractive for alcoholic beverages producers.
6.1
Overview of the current legislation and important case law relating to
registration of tactile marks
6.1.1 International regulation
The international legislation on tactile marks is almost identical to that of scent
marks. They fall in the same category of ‘Marks Consisting of a Non-Visible Sign Other
Than a Sound Mark’ recognized by the Singapore Regulations. Similarly, the protection
offered for all signs that are capable to distinguish products or services of one undertaking
from another pursuant to Article 15 of the TRIPS applies for tactile marks as well. The
main issue rests in the representation of the tactile sign and its visual perception that can be
required by states under both Singapore Regulations and TRIPS.
252
Gilson, J., Gilson, A., Cinnamon Buns, Marching Ducks and Cherry-Scented Racecar Exhaust: Protecting
Nontraditional Trademarks, p. 801.
253
Baird, S., Touch Trademarks and Tactile Brands With Mojo: Feeling the Strength of a Velvet, Turgid,
Touch Mark?, available at: http://www.duetsblog.com/2009/07/articles/trademarks/touch-trademarks-andtactile-brands-with-mojo-feeling-the-strength-of-a-velvet-turgid-touch-mark/ (visited on 9.8.2015).
254
Gilson, J., Gilson, A., Cinnamon Buns, Marching Ducks and Cherry-Scented Racecar Exhaust: Protecting
Nontraditional Trademarks, p. 801.
255
Baird, S., Touch Trademarks and Tactile Brands With Mojo: Feeling the Strength of a Velvet, Turgid,
Touch Mark?, available at: http://www.duetsblog.com/2009/07/articles/trademarks/touch-trademarks-andtactile-brands-with-mojo-feeling-the-strength-of-a-velvet-turgid-touch-mark/ (visited on 9.8.2015).
58
According to the user association INTA, the first time the texture broke through as
trademarkable was in April 2004 when Ecuador became the first country in the world to
grant registration to the texture trade mark. It is however debatable what is considered as a
pure tactile mark since there were previous registrations and even one infringement case in
the USA consisting of haptic sensation.256 The Ecuadorian texture mark consisted of a
crackle glass texture on a bottle. The Ecuadorian IP Gazette showed a good example how
to make the mark available for public by using a two-step printing process in which the
inked portion was printed first, followed by an embossed overlay of texture on the same
page.257
Subsequently, in 2006, INTA showed their support for touch marks as being
distinctive in relation to a goods or services. Moreover, INTA acknowledged that touch
marks are even capable of being inherently distinctive in cases where the tactile
characteristics could be extraordinary and unexpected in connection with the products or
services involved.258
6.1.2 EU regulation and case law
The current position of the EU legislation concerning the touch marks is the same
as concerning scent marks. The touch mark has to be therefore represented graphically, and
at the same time, comply with Sieckmann Seven. There are currently no registrations at the
OHIM nor there is any case law dealing specifically with tactile marks. Hence, the EU
legislation does not preclude touch marks registrations, but on the other hand, the graphic
representation requirement symbolises a similar obstacle as in the case of scent marks.
Even though there is currently no tactile mark registered as a CTM, there is
a judgment on national level expressly ruling that a tactile mark can enjoy trade mark
protection.
256
see Chapter 6.1.3.
Ruiz-Astudillo, M., World’s First Texture Trademark Registered in Ecuador, available at:
http://www.inta.org/INTABulletin/Pages/World%E2%80%99sFirstTextureTrademarkRegisteredinEcuador.a
spx (visited on 2.8.2015).
258
http://www.inta.org/Advocacy/Pages/ProctectabilityofTouchMarks.aspx (visited on 5.8.2015).
257
59
Germany
The German Federal Supreme Court held with reference to Sieckmann259 and Shield
Mark260 that a tactile mark, can fulfil the criteria set therein, if the applicant provides the
register with an objective description of the relevant features of the sign allowing the
tactile perception of the mark by the public.261 However, the haptic character of the sign
cannot result solely from shape or technical details.262 In spite of the rejection of the appeal
in the case at hand,263 due to the failure of the applicant to meet the procedural
requirements set by the court, the court has generally stated that tactile marks are
registrable upon fulfilment of the general requirements. Moreover, the court provided the
future applicants with valuable guidelines by declaring that an applicant should specify in
detail the scope of the dipping and uprising features of a physical surface. In contrast to the
decision of the German Federal Patent Court,264 on which the appeal was based, the court
held that a precise description of the felt material i.e. surface, dimension, form and
structure was sufficient and that an often subjective and complicated description of the
tactile impression i.e. the haptic stimulus that results from feeling an object is not
necessary. Notwithstanding that, the court stressed that a mere picture of the haptic
material and a rough description cannot fulfil the requirement of sign being represented
graphically. 265
German Patent and Trade Mark Office also stands out by keeping a registration in
Braille letters for alcoholic and non-alcoholic beverages that form the name of the owner
company “UNDERBERG.”266
6.1.3 US regulation and case law
In spite of the fact that unlike OHIM, the USTO registers some tactile marks, there
are still very rare. Even though INTA proclaimed that tactile marks could be inherently
259
Case C-273/00 Sieckmann v Deutsches Patent- und Markenamt [2003].
Case C-283/01 Shield Mark BV v Joost Kist [2004].
261
Traub, F., German Federal Supreme Court decides on registrability of tactile marks (Case I ZB 73/05 –
Tastmarke/Tactile Mark), p. 9.
262
Weber, N., Viefhues, M..,The Tradition of Non-traditional Trademarks in Germany, p. 88.
263
BGH [2006] I ZB 73/05 – Tastmarke/Tactile Mark.
264
The Federal Patent Court [2005] (28 W (pat) 228/03).
265
Weber, N., Viefhues, M..,The Tradition of Non-traditional Trademarks in Germany, p. 89.
266
Reg. No. DE30259811 see more at http://www.copat.de/markenformen/Tactilemark.pdf (visited on
10.8.2015).
260
60
distinctive, in practice successful registration requires proof of secondary meaning. Same
as with other non-conventional marks, the texture has to avoid functionality.267
Registrations of tactile marks are very scarce. Two of such rare examples could be
found in the USPTO’s database, both being for wine packaging. First of them consisting of
a flocked velvet texture of a label on a wine bottle268 is registered only in the inferior
Supplemental Register. The second tactile mark described as “consisting of a leather
texture wrapping around the middle of a bottle of wine”269 made it to the Principal
Register. The registrations were granted, because the texture did not serve a functional
purpose. Both, the velvet and the leather texture, served as indicators of commercial origin
of the wine and distinguished the product from the ones of other competitors.270
Previously, the Principal Register kept another touch mark consisting of a velvet
texture for wine bottles packaging,271 but the trade mark was cancelled in 2013. Another
attempt to register a touch mark dates back to 2010. A German pharmaceutical company
applied for a touch mark for nitroglycerine with a very detailed description of the mark:
“The mark consists of the distinctive touch and feel of a glass pump spray bottle with a
plasticized surface. The pump spray bottle has a smooth surface with a weightiness,
thickness and durability imparted by the glass; simultaneously the bottle has a lightness
and rubber-like quality imparted by the plasticized coating.”272 The application to the
Principal Register was however abandoned in 2013 and it is difficult to predict whether the
German company would have succeeded in proving distinctiveness and non-functionality
at the USPTO. However, it would be even more interesting to see from the trade marks’
enthusiasts point of view, whether such detailed description would satisfy the criteria of
CTM, especially after the proposed changes in CTMR and TMD come in force.
The only reported case relating to tactile marks occurred quite long time ago in
1972. Schwinn Bicycle Co., a manufacturer of original and replacement bicycle rims,
accused its competitor Murray Ohio Mfg. Co. of a trade mark infringement. The disputed
267
Anderson, C., Baseer, N., Jones, P., Strategic Intellectual Property Protection in Franchise Systems:
Beyond Trademark Registration, pp. 8 - 9.
268
U.S. Reg. No. 2,751,476 (Aug. 12, 2003).
269
U.S. Reg. No. 3,896,100 (Dec. 28, 2010).
270
Anderson, C., Baseer, N., Jones, P., Strategic Intellectual Property Protection in Franchise Systems:
Beyond Trademark Registration, pp. 8 - 9.
271
U.S. Reg. No. 3,155,702 (Oct. 7, 2006) [trade mark cancelled in 2013].
272
U.S. App. Serial No. 85,007,641 (filed Apr. 6, 2010).
61
trade mark consisted of a knurl design appearing on the inner face of Schwinn’s tubular
rims described in the Register as “two endless parallel lines, each consisting of a
multiplicity of cross parallel lines, knurled into the inner surface of a bicycle rim of metal
on opposite sides of the spoke apertures formed in such rim.”273 The Appeal court upheld,
the District Court’s findings that the knurled markings were a commercial necessity for
masking roughened and charred appearance and the only other method of achieving this
result was more complex and expensive. Therefore, the Court came to the conclusion that
the trade mark in question was not valid, because the knurled markings had functional
character and were thus not entitled to exclusive appropriation as a trade mark.274
6.2
Practical issues relating to registration of tactile marks and the possible effect
of abandonment of the graphic representation requirement on their registration
Despite the fact, that the touch proved to be capable of the main trade mark
function, serving as a source of origin, entrepreneurs are not that eager to opt for tactile
marks as means of delivering the message of trade origin. The lack of application claiming
texture as a trade mark in the USA and the scarcity of its success gives us a hint that the
problem of tactile marks does not lie in the graphic representation thereof. The main issue
is the functionality and the lack of distinctiveness.
Tactile marks have struggled with substantive objections on the grounds of being
merely ornamental and not serving as a source of origin. If the texture is to obtain trade
mark protection, the consumers have to perceive the texture as a source identifier and not
as mere ornamentation.275
Another doubt relating to the real primary function of tactile marks was raised in
connection with the ‘velvet touch’ registration for the Khvanchkara wine in 2006.276 The
main function of the mark was rather to communicate information about the velvety
characteristic of the wine than to serve as identification of single source. The term ‘velvety’
is often used as a description of the texture of tannin in some red wines. Similarly in this
273
Schwinn Bicycle Co. v. Murray Ohio Mfg. Co., 339 F. Supp. 973 (M.D. Tenn. 1971), aff'd, 470 F.2d 975
(6th Cir. 1972).
274
ibid.
275
Monteiro, Ch., A Nontraditional Per-Spectrum: The Touch of Trademarks, available at:
http://www.inta.org/INTABulletin/Pages/ANontraditionalPerSpectrum.aspx (visited on 15.8.2015).
276
U.S. Reg. No. 3,155,702 (Oct. 7, 2006) [trade mark cancelled in 2013].
62
case, the Khvanchkara wine’s taste was associated with the term velvety in online retail
shops descriptions of the wine.277 Considering that, an issue of functionality and of an
unfair competitive advantage arose again. As noted by trade mark lawyer Steve Baird in
his blog, “[i]sn’t this somewhat analogous to treating the color yellow as functional
and part of the public domain for yellow-colored safety products?” If so, to avoid
providing one with an unfair competitive advantage over another, shouldn’t “velvet touch”
wine bottle coverings be available for use in connection with any wine having a “velvety”
quality, whether or not the covering is limp, loose, tight, or turgid?”278
One more reason why the tactile marks are such a rarity is that trademarking of the
texture itself is typically not the best option fitting the needs of the applicant. Few of the
entrepreneurs opt for registering a purely tactile mark, but instead choose to trademark the
shape of goods or product packaging. Similarly, as in the case of sounds, where the trade
mark and copyright protection tend to overlap, in the case of touch, trademarking of the
shape or product package or even design protection could serve the needs of the trader
better.
A specific group within tactile marks consist of Braille marks, designed primarily
for sight-impaired. However, this group can raise questions regarding the functionality
aspect. The Braille letters may be considered as carrying a functional feature since they are
addressed for the sight-impaired who are only able to recognize the trademarked sign
through the Braille letters. Another issue with Braille marks is that they can hardly pass the
test of being intelligible for an ‘average consumer’. Therefore, if Sieckmann279 barred
chemical formulas, because only limited amount of people were able to reproduce it or
even read it, the same logic should apply with Braille tactile marks. Regardless of these
reservations, the German Patent and Trade Mark Office accepted the registration of
a haptic mark in Braille.280
The abandonment of graphic representation requirement certainly opens the door
for new possibilities of tactile marks representations, but at the same time, it does not
277
Baird, S., Touch Trademarks and Tactile Brands With Mojo: Feeling the Strength of a Velvet, Turgid,
Touch Mark?, available at: http://www.duetsblog.com/2009/07/articles/trademarks/touch-trademarks-andtactile-brands-with-mojo-feeling-the-strength-of-a-velvet-turgid-touch-mark/ (visited on 9.8.2015).
278
ibid.
279
Case C-273/00 Sieckmann v Deutsches Patent- und Markenamt [2003].
280
Reg. No. DE30259811, see also chapter 6.1.2.
63
inevitably guarantee that they would be granted trade mark protection in the EU. Problems
of functionality and fulfilment of Sieckmann Seven would most probably represent the
main obstacles for traders trying to acquire a trade mark protection for texture.
Questionable remains also the maintenance of a database consisting of tactile marks and its
accessibility for traders willing to search for previously granted trade mark rights.
Hence, the registration of tactile marks is not impossible, just extremely hard to
obtain and even harder to succeed with in an infringement claim before the court.
64
7
Taste
Taste marks, called also flavour or gustatory marks, are the scarcest of all the
sensory marks. The taste can represent a strong incentive leading the consumer to the
source of origin, but is perceived, similarly as smell, very subjectively. Unlike other
sensory marks, the taste marks have not so far convinced of their capability to serve as
indicators of trade origin, which is the essential function of any trade mark.
7.1
Overview of the current legislation and important case law relating to taste
mark registration
Neither the CTMR nor the Lanham Act themselves do not explicitly exclude
registration of tastes as trade marks. However, even if the flavour mark would be
considered by the respective register as being capable to serve as a source of origin, the
functionality would most probably signify an impassable hurdle as well as the criterion of
graphic representation. The registration of a taste as a trade mark has so far been
unsuccessful.
According to the position expressed by WIPO Standing Committee on the Law of
Trade Marks, Industrial Designs and Geographical Indications (SCT), the graphic
representation of taste marks should not be that problematic. In the point of view of the
SCT the criterion could be simply “satisfied by using a written description of the taste and
an indication that it concerns a taste mark.”281 It is however necessary to add, that such
description could hardly be seen by the respective register authorities as ‘graphical
representation’ and even though it could be accepted by USPTO, it would most certainly
be refused by OHIM.
7.1.1 EU regulation and case law
Eli Lilly & Co’s wished to register at OHIM an artificial strawberry flavour for
their pharmaceutical products, but their CTM application was rejected mainly on the
grounds of functionality, but also for not fulfilling the requirement of graphic
representation.282 OHIM’s 2nd Board of Appeal explained the functionality of the flavour
281
282
http://www.wipo.int/wipo_magazine/en/2009/01/article_0003.html (visited on 12.8.2015).
CTM App. No. 001452853 (filed Jan.1, 2000, refused Mar. 2, 2004).
65
by pointing out that “any manufacturer is entitled to add the flavour of 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.”283 The Board of Appeal
further underlined that the flavour does not serve as identifier of origin, because “the taste
is unlikely to be perceived by consumers as a trade mark; they are far more likely to
assume that it is intended to disguise the unpleasant taste of the product.”284
Afterwards, OHIM also refused an orange flavouring as a trade mark for
antidepressants in quick-dissolving tablets claimed by N.V. Organon.285 The application
was filed both in the EU and in the USA (see below) and in both cases the company did
not succeed in getting their taste mark registered.
France
Eli Lilly & Co tried their luck with the artificial strawberry flavour also in France
where the French Intellectual Property Office rejected their taste mark application. The
position of the register office was reaffirmed in the appeal process before the Court of
Appeal of Paris,286 which stressed that the mark was devoid of any objective character. The
court also noted that the strawberry flavour lacks consistency and depends on the type of
fruit considered or the ripeness of the fruit. The mere indication of ‘artificial flavour’ in the
application is not enough to guarantee a required consistency since there are several
strawberry flavours that could be synthesized.287
7.1.2 US regulation and case law
To this point, the USPTO, similarly as OHIM, has not granted any registration of a
taste mark.288 The same trade mark application as N.V. Organon filed at OHIM consisting
of its orange flavouring for antidepressants in quick-dissolving tablets, was refused by the
283
Eli Lilly / The taste of artificial strawberry flavour, R120/2001-2 (4. Aug. 2003), para 15.
ibid, para 16.
285
CTM App. No. 003132404 (filed Apr. 14, 2003, refused Jan. 7, 2005).
286
Eli Lilly and Co. v. INPI, Court of Appeal of Paris, 4th Chamber, October 3, 2003, Dalloz, Vol. 184
(2004), No. 33, p. 2433.
287
Hirsch, M., Annual Review - The Thirteenth Annual International Review of Trademark Jurisprudence:
France, p. 403.
288
As of 13.8.2015.
284
66
USPTO. One of the main reasons of the refusal was the functional character of the taste.289
N.V. Organon objected that the orange flavour similarly as the colour of pill, had no
impact on the cost, quality, functionality, or effectiveness of its product and that they could
have selected alternative flavours such as cherry or grape. TTAB was not convinced and
stipulated that “flavour performs a utilitarian function that cannot be monopolized without
hindering competition in the pharmaceutical trade.”290 TTAB held that the orange flavour
of pharmaceutical pill functioned to cover the unpleasant taste of the medicine.291
Ironically, TTAB pointed on the applicant’s own marketing of the product that lead the
examining authority into finding of functionality of the orange flavour since the applicant’s
website advertised that the flavour “increases patient compliance and is an important
advantage over other tablets.”292 Therefore, using the sensory stimuli in marketing can
lead to directing consumers to products’ useful features, but at the same time, cause their
unprotectability on the grounds of functionality doctrine.293
Another application that was rejected was a rather obscure one, in which the same
German pharmaceutical company that attempted to register a tactile mark for their products
tried their luck with a flavour mark as well. The taste mark was described as “the
distinctive flavour of peppermint in connection with nitro-glycerine”294 for pharmaceutical
formulations of nitro-glycerine. The application was preliminarily rejected on the basis of
functionality, but An Office Action295 in an astonishing attempt of diligence asked for a
sample, which the examining attorney would be able to actually taste.296 TTAB affirmed
the refusal on the grounds of functionality and failure to convey the message of trade
origin.297
289
Welch, J., Citable No. 34: TTAB Affirms Refusal of Flavor as a Mark for Pills on Grounds of
Functionality and Failure To Function, available at: http://thettablog.blogspot.fi/2006/06/citable-no-34-ttabaffirms-refusal-of.html (visited on 13.8.2015).
290
In re N.V. Organon, 79 U.S.P.Q.2d 1639 (T.T.A.B. 2006).
291
Welch, J., Citable No. 34: TTAB Affirms Refusal of Flavor as a Mark for Pills on Grounds of
Functionality and Failure To Function, available at: http://thettablog.blogspot.fi/2006/06/citable-no-34-ttabaffirms-refusal-of.html (visited on 13.8.2015).
292
In re N.V. Organon, 79 U.S.P.Q.2d 1639 (T.T.A.B. 2006).
293
Gilson LaLonde, A., Gilson, J, Getting Real With Nontraditional Trademarks: What’s Next After Red
Oven Knobs, the Sound of Burning Methamphetamine, and Goats on a Grass Roof?, p.197.
294
U.S. App. Serial No. 85,007,428 (filed Apr. 6, 2010) (abandoned May 28, 2013).
295
Office Action of July 14, 2010 for U.S. App. Serial No. 85,007,428.
296
Gilson LaLonde, A., Gilson, J, Getting Real With Nontraditional Trademarks: What’s Next After Red
Oven Knobs, the Sound of Burning Methamphetamine, and Goats on a Grass Roof?, p.194.
297
In re Pohl-Boskamp GmbH & Co. KG, 106 USPQ2d 1042 (TTAB 2013).
67
The very recent New York Pizzeria298 case proved that the functionality test cannot
be tricked easily. New Your Pizzeria’s attempt to trademark their special flavour for pizza
was rejected. Given the fact that flavour was found functional for medicine products, an
idea of registering a taste mark for a food product seemed rather overconfident from the
very start. Judge Costa referred to definition of functionality cited in Qualitex299 and
affirmed that flavours are functional and that the functional features of a product are not
protectable.300 The court reasoned that people consume food not only in order to satisfy
their basic hunger needs, but also to enjoy the other main attribute of food - its flavour,
which applies especially for the restaurant food. The court dismissed the claim mainly on
the grounds of functionality stating that the food taste indisputably affects its quality, and
is for that reason a functional element of the product.301
Even so, the court did acknowledge that a flavour could indeed be trademarked, but
at one go added that it has to serve as the source of origin for the goods or services in
question. Similarly as other sensory marks, flavours are not capable of being inherently
distinctive and therefore have to prove acquiring of secondary meaning in order to be
granted trade mark protection.302 Nevertheless, the obstacle of functionality for registering
a taste mark for food proved to be insurmountable.
7.2
Practical issues relating to registration of taste marks and the possible effect of
abandonment of the graphic representation requirement on their registration
If we are to apply the popular trend of broad definition of what can be accepted as a
trade mark, flavour should not be left out of protection. However, the key issue is whether
flavour is capable of distinguishing itself as a trademark. The taste marks, like other nontraditional trade marks, will never be immediately perceived as a source identifier by the
consumers i.e. as being inherently distinctive.303
298
New York Pizzeria, Inc. v. Syal et al, No. 3:2013cv00335 (2014), pp. 13-14.
“a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost
or quality of the article” cited in Qualitex, supra, at 165 (quoting Inwood Laboratories, Inc. v. Ives
Laboratories, Inc., 456 U.S. 844, 850, n. 10).
300
Weiss, M., Happy to Deliver To You This Trade Mark Infringement in Pizza Flavor Case, available at:
http://ipkitten.blogspot.sk/2014/10/happy-to-deliver-to-you-this-trade-mark.html (visited on 12.8.2015).
301
New York Pizzeria, Inc. v. Syal et al, No. 3:2013cv00335 (2014).
302
ibid.
303
Compton, A., Acquiring a Flavor For Trademarks: There's No Common Taste in the World, p. 345.
299
68
Probably the most crucial problem of the taste marks is the highly subjective and
variable perception thereof. Because of that, taste marks have been denied registration as
not being sufficiently capable of a precise and replicable graphic representation. Tastes in
general fail the test of objectivity and sustainability. It is for example impossible to
determine a single apple taste, as there exist many varying tastes of apples.304 Therefore,
because of their inconsistency leading to a likelihood of confusion of the consumers, they
are not capable of reliably conveying the message of trade origin thus failing the main
function of the trade mark.
Moreover, the perception of taste is often closely linked to smell. This is well
demonstrated in descriptions of fruit flavour or oak tone in wines where the perception of
the taste relies considerably on smell. As noted by Californian IP attorney Mr. Prettyman:
“The wide range of genetic ability to taste various compounds combined with age and
culture related considerations makes an adequate description likely impossible at any
stage of technology.”305
Furthermore, it is also hard to imagine how the taste marks should work in practice,
because as the TTAB pointed out In Re Organon, “it is difficult to define how taste can act
as a trademark when consumers only taste goods after purchase.”306 The TTAB’s point of
view was rather sceptical doubting whether a taste can in fact ever be capable to function
as a trade mark. The key function of trade marks is to identify and distinguish goods or
services of one trader from another and providing that the consumers generally have no
access to a product’s flavour before making a purchase, the flavour does not serve to
distinguish the product in that way.307 Besides, as emphasised in the same case, even the
marketing of the taste feature is not helping at all since it directly points on its functional
character for the product, which represents an outright bar for registration of such mark.308
304
Gérard, A., The Proposal to Delete the Requirement of Graphical Representation of a Trade Mark
Registered in the European Union, available at https://ipcopy.wordpress.com/2014/01/24/the-proposal-todelete-the-requirement-of-graphical-representation-of-a-trade-mark-registered-in-the-european-union/
(visited on 17.7.2015).
305
Prettyman, G., Should product features of touch, smell or taste be eligible for trademark?, available at:
http://grpblawg.blogspot.fi/2009_07_01_archive.html (visited on 12.8.2015).
306
In re N.V. Organon, 79 U.S.P.Q.2d 1639 (T.T.A.B. 2006).
307
Anderson, C., Baseer, N., Jones, P., Strategic Intellectual Property Protection in Franchise Systems:
Beyond Trademark Registration, p. 9.
308
Gilson LaLonde, A., Gilson, J, Getting Real With Nontraditional Trademarks: What’s Next After Red
Oven Knobs, the Sound of Burning Methamphetamine, and Goats on a Grass Roof?, p.197.
69
When it comes to the functionality obstacle, certain flavours used for certain
products will never make it as taste marks, because they have to be available to the
competition. For example, it is very probable that a mint flavour used for toothpaste for
adults or bubble gum flavour used for toothpaste for children will be found functional due
to being refreshing, appealing and generally popular to use. Because of being so popular
and used so frequently by different producers such flavours may also be found to be
generic. The likeliness of evading the finding of functionality by the court gets more
probable if the flavour is claimed for products that are not meant to be consumed. For
example, caramel or peanut butter added to a toothbrush or dental floss would be
considered as unusual flavours and could more likely acquire trade mark protection than if
the same flavours were claimed for cookies.309 Moreover, as also underlined in New York
Pizzeria,310 food producers are in a greater competitive need for flavours than those who
make dental hygiene products.311 That said, Eli Lilly & Co.’s and N.V. Organon’s failed
attempts to register taste marks in the pharmaceutical industry both in the EU and in the
USA prove that the applied-for flavour would have to be truly unusual and exceptional in
the business field of the applicant in order to even stand a chance.
Given the above mentioned issues, the removal of graphic representation criterion
from the CTMR and TMD would most probably not affect the registrability of taste marks
since the requirement for the marks to be represented graphically does not represent the
biggest obstacle that the taste marks are facing. Therefore, the answer to the question of
whether taste marks will enjoy trade mark protection after the abandonment of the
requirement of graphic representation is most definitely in negative.
309
Gilson, J., Gilson, A., Cinnamon Buns, Marching Ducks and Cherry-Scented Racecar Exhaust: Protecting
Nontraditional Trademarks, p. 801.
310
New York Pizzeria, Inc. v. Syal et al, No. 3:2013cv00335 (2014), pp. 13-14.
311
Gilson, J., Gilson, A., Cinnamon Buns, Marching Ducks and Cherry-Scented Racecar Exhaust: Protecting
Nontraditional Trademarks, p. 801.
70
8
Conclusion
8.1
Protection of sensory marks under the current EU regulation
The concept of a traditional trade mark as we understood it 50 years ago is
unsustainable and the using of more and more innovative and non-conventional methods of
protection of brands as sources of origin is growing constantly. The question is how much
can the trade mark registration criteria be stretched in order to protect such innovative
ideas?
Generally speaking, the EU legislation does not exclude trade mark protection of
sensory marks. The current law states that in order to be registered a trade mark has to
consist of sign, which has to be represented graphically and must be capable to distinguish
products or services of one entrepreneur from another. However, as the practice of the
register authorities in the EU and Member States shows, the register authorities have not
been overly inclined to grant trade mark registrations to sensory marks so far.
Apart from colours and sounds, which are being more or less regularly accepted for
registration by OHIM and Member States’ registers, the sensory marks face several
obstacles. The jurisprudence of the CJEU stipulated that sensory marks are normally not
inherently distinctive and therefore have to prove distinctiveness acquired through use. The
consumers have to associate the perception of the particular sense with the brand without
likelihood of confusion. That usually means that the applied-for mark has to be used for a
significant time prior registration in order to become distinctive.
All the main issues standing in the way of the respective sensory mark to be
registered are captured by the Sieckmann Seven. Therefore, it can be concluded, that it is
essential for each sensory mark, in order to be registered, to comply with Sieckmann Seven
criteria imposed by the case law of the CJEU i.e. the representation of the sensory sign
must be ‘clear, precise, self-contained, easily accessible, intelligible, durable and
objective’.
71
8.2
Possible convergence of EU and US paths
The position towards registration of sensory marks is currently more favourable in
the USA than in the EU. In spite of that, the number of registrations in the USA is small in
comparison with the overall amount of registered and applied-for trade marks. Apart from
more established marks as colours and sounds, acquiring protection for the other sensory
marks does not seem to represent the current business strategy of enterprises. Similarly as
in the EU in order to become trade marks the respective applied-for sense has to be capable
to serve as source of origin and be able to distinguish the products of the applicant from
other competitors’ products.
It seems that the EU and the US paths on the journey to the sensory marks
registration are slowly converging. Despite the different approach to non-traditional marks
applied so far, the proposed abandonment of graphic representation would bring the
registration systems closer. In the USA, the graphic representation has not been an
obligatory criterion for trade mark registration of non-visual signs. The US legislation and
case law is undeniably a great source for EU regulation of sensory marks considering that
the US courts has dealt with considerably more practical cases on the topic than the EU or
any of its Member States.
Moreover, the IP law in general is not a static body. Quite the opposite, the IP is
one of the fastest developing areas of law given its correlation to technical progress. Trade
mark law should therefore keep the pace with the technical development and evolve
accordingly. Given the longer trade mark practice, the USA is certainly a place to look
when searching for solutions to practical issues arising when registering new nonconventional types of marks. The abandonment of graphic representation as an obligatory
requirement may serve as a good example. Since the US register authorities and courts
have already dealt with the respective cases (such as e.g. infringement cases), it can serve
as a strong inspiration for the EU authorities to see the benefits and difficulties thereof in
practice.
However, it should not be forgotten that the US legal system is different from that
of EU. It would be impossible to directly transplant the US trade mark legislation into EU
system. There are many differences between the USA and the EU such as the institutional
72
system or precedential system, which is why such transplant out of context would not be
able to survive in the EU environment.
Therefore, the EU has to be careful if trying to apply any trade mark practice from
the USA. The legislators have to pay great attention to the possible impact on the business
environment in the Member States and in the EU. Nevertheless, the experience of the case
law impact on competitors and consumers in the USA is of a great value and should
definitely be assessed by the EU lawmakers.
8.3
Impact of the proposed removal of graphic representation requirement on the
registrability of sensory marks in the EU
For most of the sensory marks, the abandonment of the graphic representation
would not in fact mean a significant step forward in their capability to be registered. As
was discussed with each type of the sensory mark, the graphic representation does not
represent the only obstacle sensory marks have to overcome.
Colour marks, as the only visually perceptible marks among sensory marks, have
not been preoccupied with the ability to be graphically representable, but rather with the
Sieckmann Seven requirements for the sign representations. Even though the amount of
registrations of colours per se is not yet anyhow overwhelming, the practice of what is
required for a colour mark to be granted registration has become rather clear and stable and
the colour marks applications are generally accepted. Also, since colours are visually
perceptible it is logical and appropriate to require graphic representation of the sign.
From the perspective of scents, touch and tastes the removal seems to bring a hope
of brighter future, but the hope is almost instantly swiped away by the Court’s practice on
the matter. Due to the issues discussed, the tastes are the most unlikely to benefit from the
removal at all. All the preparatory materials for the EU trade mark reform maintain the
idea that the representation of the trademarked sign has to comply with Sieckmann Seven,
which reflects the actual need to determine what exactly is covered by the application in a
better way than the obsolete criterion of graphic representability. Therefore, unless the
traders come up with a new idea for representation satisfying the Sieckmann Seven criteria,
the registrations of scents, textures or tastes are not likely to follow.
73
The only sensory marks that appear to straightforwardly benefit from the revised
provisions on what can be registered as a European trade mark (CTM) at OHIM and/or
trade mark at register authorities of Member States, are sound marks. The graphic
representation consisting of musical score, spectrograms or sonograms only serves those
who have the proficiency to understand them, but the actual sample that could be perceived
directly through the sense for which it was designed – hearing serves much wider public.
Upon the removal of the graphic representation requirement, the traders would not have to
focus on how to accurately graphically depict the applied-for sound, but simply deposit a
sound file through an online trade mark application system. Moreover, the traders will
remain free to decide whether they wish to enclose also graphic representation and/or a
written description of the sign to the application for enhanced clarity.
Therefore, if as it appears, the abandonment of graphic representation will not, with
the exception of sound marks, anyhow substantially affect the registrability of sensory
marks in the EU, should it then indeed be abandoned? Firstly, it has to be taken into
account that the sensory marks form only a part of the bigger group of non-conventional or
non-traditional trade marks. Secondly, the real effect of the removal is only to be seen in
the practical application thereof by OHIM and national register authorities together with
the subsequent practice of courts dealing with the new issues arising after the removal.
That said the graphic representation does indeed symbolise a form of certainty. It
enables the other entrepreneurs to conduct relatively easily searches of previously
registered marks in the register, which is of crucial importance for the process of
registration of their own marks. The novelty could also cause problems for the examining
register authority regarding the distinctiveness of the marks, which would be in conflict
with one of the main aims of the Proposals – to enhance legal certainty.
On the other hand, new methods of conveying the commercial message to
consumers are constantly emerging and the role of the IP law is to provide protection to the
creators and proprietors of all the different forms of intellectual property. In order to fulfil
its function, the trade mark law has to keep up with the technological progress and grant
protection also to non-traditional marks such as sensory marks. To achieve that, the
legislation has to get rid of requirements that have become obsolete over the time such as
74
graphic representation. The practice has proved that the main issues for sensory marks go
beyond the need of the mark to be represented graphically.
From the moral point of view, one could argue that the ‘senses’ should be let
untouched by proprietorship and remain to be free to use for everyone. That is certainly a
valid point also from the business perspective, especially in the commercialized world of
nowadays where ensuring of free competition among traders has become one of the
essential objectives of the EU law.
On the final note, I would like to point out the observation of Professor Maniatis on
scent marks summarizing why senses in spite of being capable to be conveyors of the
commercial origin and serve the main trade mark function, might not necessarily belong
there:
“[P]erhaps it is better for people to avoid trademarking scents, and, instead, let the
scent of the rose fulfil its superb function, irrespective of its name, even when it can
indicate origin.”312
Therefore, the above stated conclusions of my research prove that the hypothesis of my
study stipulated in the introduction is correct:
“Sensory marks in general can enjoy the same trade mark protection in the EU
as other more traditional trade marks pursuant to fulfilment of the strict registration
criteria. However, for some of the sensory marks – scent, touch and taste marks the
requirements imposed by the current EU legislation and case law represent an
insurmountable obstacle. The proposed reform of the EU legislation can facilitate the
registration of the sensory marks to a certain extent, but it will not eliminate all the
issues the respective sensory mark has to overcome.”
312
Maniatis, S., Scents as Trademarks: Propertisation of Scents and Olfactory Poverty, Law and the Senses:
Sensational Jurisprudence 231, Lionel Bently & Leo Flynn, eds., 1996 cited in Mezulanik, E., The Status of
Scents
as
Trademarks:
An
International
Perspective,
available
at:
http://www.inta.org/INTABulletin/Pages/TheStatusofScentsasTrademarksAnInternationalPerspective.aspx
(visited on 27.8.2015).
75