Nontraditional Marks
Traditional Definition of a Trademark
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Consists of a word, a logo or a combination of both.
The word or words may be invented or may appear in a
dictionary. A mark may also consist of letters, numerals
or a combination of both. A logo may be an abstract
design, a stylization or a simple reproduction of an
everyday object or image.
Definition of Nontraditional Mark
Some jurisdictions enable applicants to protect certain
nontraditional marks. Generally, the term “nontraditional
marks” covers marks, other than word, figurative or
complex marks, that are used to identify products or
services. Following are examples of nontraditional marks:
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•
•
•
•
•
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Appearance (including color and/or color combination)
Motion
Shape
Sound
Scent
Taste
Touch
Overview of Nontraditional Marks
• Nontraditional marks remain quite rare: for example, for
1996–2012, 57% of Community trade mark applications
were for word marks, 42% for figurative marks and just
0.02% for sound marks. There were only 10 applications for
hologram marks and 7 for smell marks during that period.
• Proof of acquired distinctiveness often will need to be
shown to secure registration of nontraditional marks.
• Other IP rights (e.g., design rights) may be useful in
protecting nontraditional elements of brands in some
jurisdictions.
Appearance
Color — United States
• In general, the right to the exclusive use of a specific color
as a trademark on product packaging has met with a mixed
response in U.S. court cases.
• U.S. Supreme Court held color can qualify for trademark
protection (Qualitex Co. v. Jacobson Products Co.).
– In a unanimous decision, the Court held that “a special shade of
green-gold” functioned as a trademark for dry cleaning pads.
– For color to function as a trademark, it must be nonfunctional and
have acquired distinctiveness.
Single Colors — EU
Libertel Groep BV v. Benelux-Merkenbureau (Case C-104/01 (ECJ May 6, 2003)):
• Application to register the color orange.
• The Court held that color marks are registrable based on acquired distinctiveness.
• Graphic representation of a color mark must be “clear, precise, self-contained, easily
accessible, intelligible, durable and objective” (these are known as the Sieckmann
criteria). This condition may be satisfied “by designating that colour using an
internationally recognised identification code,” such as Pantone®.
Color trademarks have successfully been enforced in court in other European cases
(e.g., BP Amoco PLC v. John Kelly Ltd).
Color Combinations — EU
Heidelberger Bauchemie GmbH (Case C-49/02 (ECJ June 24, 2004)):
•
The applied-for mark comprised the colors blue and yellow for goods in Class 3. The
following description accompanied the application: “The trade mark applied for consists of
the applicant’s corporate colors which are used in every conceivable form, in particular on
packaging and labels.” The application listed the colors under the Pantone® system.
•
The decision is perceived as tightening the rules on color combinations. The application
was refused because, without spatial delimitation, the combination of colors comprising
the mark was not sufficiently precise.
•
Applications for color combination marks must include “a systematic arrangement
associating the colours concerned in a predetermined and uniform way.”
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Examination “must also take account of the public interest in not unduly restricting the
availability of colours for other traders who market goods or services of the same type as
those in respect of which registration is sought.”
Color — Japan
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As a general rule, a single-color mark is not registrable under the Japanese
Trademark Law because it lacks distinctiveness and is not able to distinguish
the goods as originating from the proprietor. However, it is possible that a color
mark can become distinctive based on use.
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It is more likely that a color mark will be registered if it is combined with a device
or is in a configuration. It was concluded that the examples below satisfy these
requirements because of the plurality of colors.
Color — Australia
• BP’s application to register the color green in respect of service stations
was rejected. (Woolworths Ltd v. BP plc (No. 2), [2006] FCAFC 132
(Sept. 4, 2006).) The evidence of use of the trademark in that case
consisted of predominantly green, with some parts of yellow, which was
not considered to support an application for just green being
predominantly applied to different parts of a service station.
• A dispute spanning several years concerning Cadbury’s applications to
register the color purple and Darrell Lea’s use of the color purple was
resolved. (Cadbury Schweppes Pty Ltd v. Darrell Lea Chocolate Shops
Pty Ltd (No. 8), [2008] FCA 470 (Apr. 11, 2008).)
• Mars was granted a registration for the color “Whiskas Purple.” (Mars
Australia Pty Ltd (formerly Effem Foods Pty Ltd) v. Société des Produits
Nestlé SA, [2010] FCA 639 (June 22, 2010).)
Shapes — United States
The shape may be a three-dimensional representation of the product itself, the
container for the product, or the architectural design of a store or signpost. It may be
the shape of a label or tag and not simply the words or colors appearing thereon.
Examples:
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The Coca-Cola bottle
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Apple’s iPod
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AT&T’s globe design
Shapes — EU
Koninklijke Philips Electronics NV v. Remington Consumer Products Ltd (Case C-299/99
(ECJ June 16, 2002)):
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To be capable of distinguishing an article, “the shape of the article in respect of which the
sign is registered does not require any capricious addition, such as an embellishment
which has no functional purpose.”
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“[S]igns consisting exclusively of the shape which results from the nature of the goods
themselves, or the shape of goods which is necessary to obtain a technical result, or the
shape which gives substantial value to the goods cannot be registered.” (See also Trade
Marks Directive Art. 3.1(e).)
Shapes — EU — Examples
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Accepted
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Rejected
Philips three-headed
rotary shaver
Coca-Cola bottle
Bang & Olufsen
loudspeaker
Dishwasher tablet
Shapes — Japan
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In Japan, the percentage of trademarks accepted for registration (1996–present) is 70%–85%. The
acceptance rate for three-dimensional trademarks is much lower (35%–55%); for three-dimensional
trademarks without any characters, the rate falls further, to approximately 20%.
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Very few three-dimensional trademarks that consist solely of functional shapes (i.e., the container of
the goods or industrially designed products) have been registered.
•
1997 Trademark Law enabled registration of
three-dimensional marks.
100%
90%
80%
86.0%
77.7%
70%
67.7%
60%
50%
40%
Acquired distinctiveness is normally necessary.
30%
Trademarks
20%
10%
3D Trademarks
20
06
20
05
20
04
20
03
20
02
20
01
20
00
19
99
19
98
0%
19
97
Example case: Coca-Cola bottle.
19
96
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20
09
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69.9%
54.8%
51.4%50.7%
48.8%
46.9%
46.0%
45.1%
41.3%
39.8%
44.1%
37.2%
33.7%
35.1%
20
08
4,782 applications and 1,929 registrations for
three-dimensional marks (1997–Dec. 2010).
76.7%
74.4%
74.2%
74.7%
75.5% 75.3%
74.7%
20
07
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71.3%
74.9% 71.3%
Shapes — Japan
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Inherently distinctive
- Distinctive without submitting any
evidence of use of the trademark.
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Acquired distinctiveness
- Trademarks that were initially rejected for
lacking distinctiveness but were ultimately
registered following sufficient evidence
proving use of the trademark.
Trademark
s
Designated goods/
services
Summary & Analysis
Class 30
Manju (Japanese
confectionery)
Rejected in 2006
The judge did not consider that this three-dimensional trademark was
distinctive nor that it had acquired a secondary meaning. The decision was
based on the fact that the mark merely indicates the shape of bird, which has
traditionally been adopted as a shape for confectionery.
Class 11
Mini searchlight
Registered June 2007
The judge decided that the mark could be registered because it had obtained
a secondary meaning based purely on its shape after long-term use.
This is the leading case involving three-dimensional marks because the MINI
MAGLITE trademark was the first mark deemed to have obtained a secondary
meaning based entirely on its shape. This case set the precedent for the
future. Formerly, under Japanese practice, three-dimensional trademarks
consisting mainly of functional shapes, such as this trademark, had difficulty in
securing registration.
Class 32
Plastic bottles
Registered May 2008
As in the previous cases, the judge decided that this trademark should be
registered because it had obtained a secondary meaning. Coca-Cola enjoys a
worldwide reputation and huge sales volumes. The amount of advertising
submitted as evidence was a significant factor in the decision allowing the
shape to proceed to registration, aided by a questionnaire from consumers.
Trademarks
Designated goods/
services
Summary & Analysis
Class 30
Registered in June 2008
The judge decided that this three-dimensional trademark of the shape of
Guylian chocolate was inherently distinctive enough to be registered. Luxury
items such as sweets or foods are more likely to be registered as threedimensional trademarks than trademarks that consist mainly of functional
shapes.
Class 3 Bleaching
preparations and other
substances for laundry use
and cleaning
Registered in April 2011
This case involved a bottle of perfume resembling a naked female body.
Although the judge didn’t consider that this three-dimensional trademark was
distinctive, it was recognized that the mark had obtained a secondary
meaning because it had been used for over 15 years. Additionally, its fanciful
shape helped consumers recognize the trademark.
Class 29 Lactic acid bacteria
drinks
Registered in November 2011
As with other cases, the judge decided that this three-dimensional trademark
of a drink bottle should be registered because the mark had obtained a
secondary meaning after long use.
Shapes — Australia
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Remington’s triple-headed shaver did not infringe Philips’ registration for the shape of a
triple-headed shaver. (Koninklijke Philips Electronics NV v. Remington Products Australia
Pty Ltd, [2000] FCA 876 (June 30, 2000).) The court concluded that Remington’s use of
the triple-headed shaver did not amount to “use as a trade mark,” and therefore held that
it did not infringe Philips’ registration for the shape of the triple-headed shaver.
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Kenman Kandy’s insect shape was held to be distinctive for confectionery goods.
(Kenman Kandy Australia Pty Ltd v. Registrar of Trade Marks, [2002] FCAFC 273 (Aug.
28, 2002).)
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Registration of Guylian’s seahorse shape as a trademark was refused on the basis that it
was not capable of distinguishing Guylian’s goods. (Chocolateire Guylian N.V. v. Registrar
of Trade Marks, [2009] FCA 891 (Aug. 18, 2009).)
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In Gibson ([2010] ATMO 73 (Aug. 12, 2010), an application to register the shape of a
house as a trademark was rejected. The delegate of the Registrar of Trade Marks was of
the view that the evidence of use of the mark did not establish that the mark was
inherently adapted to distinguish the designated goods from similar goods of other
traders.
Sounds — United States
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May be a jingle or any piece of music or other sound. It may be a short
extract from a composition or an entire musical piece. In some cases, it may
be a reproduction of an everyday sound, perhaps in an unusual
circumstance. Examples:
– MGM Lion’s Roar
– NBC Chimes
– The AFLAC Duck Quacking
MGM Lion’s Roar
NBC Chimes
Sounds — EU
Shield Mark BV v. Joost Kist h.o.d.n. Memex (Case C-283/01 (ECJ Nov. 27, 2003)):
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Shield Mark owned numerous Benelux trademarks for the first nine notes of Beethoven’s “Für
Elise” and the sound of a cock crowing (see below) .
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The Court of Justice said a sound mark is registrable provided that “it can be represented
graphically, particularly by means of images, lines or characters, and that its representation is
clear, precise, self-contained, easily accessible, intelligible, durable and objective.… [T]hose
requirements are satisfied where the [mark] is represented by a stave divided into measures and
showing, in particular, a clef, musical notes and rests whose form indicates the relative value and,
where necessary, accidentals.”
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Prior to the Shield Mark case, Nokia’s ring tone was registered as a CTM based on notes on a
stave. (CTM No. 1040955, filed Jan. 12, 1999, registered Oct. 30, 2000.)
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In 2005, OHIM said that electronic applications could include the sound file as an attachment.
Since then, Tarzan’s yell has been registered based on a sonogram and an electronic copy of the
sound. (CTM No. 5090055, filed May 22, 2006, registered Mar. 4, 2008.)
Sounds — Australia
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The first sound mark registered in Australia was the sound of the word “sproing,” intended
to imitate the sound of a spring reverberating on metal, in respect of “floor coverings and
underlay, including carpet underlay laminates incorporating rubber or rubber substitutes”
in Class 27. (Reg. No. 738848, July 11, 1997.)
The Trade Marks Office recently accepted an application for the sound of Tarzan’s yell for
goods and services in Classes 28, 33 and 35. (Reg. No. 1480175, Mar. 14, 2012.) The
application was made by Edgar Rice Burroughs, Inc., the estate that owns the rights to
Edgar Rice Burroughs’ Tarzan books.
The same test applies to sound marks as for any other kind of trademark. The sound
trademark must be capable of distinguishing the goods or services of one trader from
those of another. Sounds that are “functional sounds” made by particular goods, and are
therefore common to the trade, will not be inherently adapted to distinguish (e.g., the
sound of a motorbike engine for goods of motorbikes).
It is a requirement that trademarks be represented graphically (Trade Marks Act 1995
(Cth) Sec. 40); however, the Trade Marks Office will accept a precise description of the
sound mark, such as musical notation.
As of May 31, 2012, there had been 83 applications filed for sound trademarks, of which
39 marks had been registered.
Scents — United States
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Scents Applied to Products – Plumeria
– Plumeria scent for sewing thread was registered in 1990.
– A written description of the scent, with or without a deposited sample, is acceptable in
the United States.
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Scents Consisting of an Inherent Product Attribute
– “Functional” scents that are inherent in the product itself, such as the scent of a
particular perfume, are not accepted for registration.
Scents — EU
Ralf Sieckmann v. Deutsches Patent- und Markenamt (Case C-273/00 (ECJ Dec. 12, 2002)
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Application for an olfactory mark for “methyl cinnamate.”
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Application included an annex with a chemical formula, directions on where to obtain a
sample and a description of the scent as “balsamically fruity with a slight hint of
cinnamon.”
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An odor sample in a container was also provided.
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The German Federal Patent Court had found that although theoretically a scent mark was
capable of distinguishing the proprietor’s services from those of other traders, it was not
capable of being represented graphically.
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The Court of Justice held that the requirements of graphic representability set out in
Article 2 of the Trade Marks Directive are not satisfied where an odor is reproduced by a
chemical formula, a description in written words, the deposit of an odor sample or a
combination of these elements.
Scents — Australia
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Registration No. 1241420 (May 20, 2008), in the name of E-Concierge Australia Pty Ltd,
for a Eucalyptus Radiata scent in respect of golf tee goods.
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Pending Application No. 1446529, for “lemon grass” in respect of health spa services in
Class 44.
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Application No. 700019, for “the strong smell of beer,” in respect of darts in Class 28, was
accepted, but ultimately the mark did not proceed to registration because the registration
fees were not paid.
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As of May 31, 2012, ten applications had been filed for scent marks, of which one mark
had been registered and one was pending.
Motion
Examples of motion trademarks include:
• Kraft Foods UK Ltd., for chocolate and chocolate confectionary (UK Reg. No. 228003,
Mar. 22, 2002): “The mark consists of the three dimensional shape breaking apart, as
shown in the sequence of still pictures attached to the form of application.”
• GDS Video (hologram, CTM Reg. No. 2117034, expired Mar. 6, 2011): “The letters VF in
white on blue spheres, the name VIDEO FUTUR in blue on a black background.” The
application also indicates the colors used.
• Lamborghini (refused as a CTM in 2001, later registered in the United States (U.S. Reg.
No. 2793439, Dec. 16, 2003): “The mark consists of the unique motion in which the door
of a vehicle is opened.”
Motion — Australia
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Motion trademarks (including moving images, holograms and gestures) are some of the
more unusual marks that have been registered.
The same principles apply: The motion trademark must be capable of distinguishing the
goods or services of one trader from those of another.
There must be clear graphical representation of all the features of the trademark and a
description of the features. A copy of the motion trademark is required for examination.
It is difficult to ascertain exactly how many motion trademarks exist, as there is no
definitive way of searching for them.
Examples include:
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–
Registration No. 848112 (Aug. 28, 2000), for “a moving image showing a black bordered yellow
coloured square with rounded corners. The letters Y, E, L, L appear individually and sequentially
in the square. The representation on the application form shows the eight stills that make up the
sequence.”
Registration No. 1134286 (Sept. 7, 2006), for “an animated sequence involving two flared
segments that join together as shown in the representations attached to the application. The
sequence is of approximately one second's duration. During the sequence, a star-shaped
geometric object moves up the outermost line of the first segment, across the apex where the two
segments join, and down the innermost line of the second segment. The lines in each segment
change colour as the geometric object moves. The two dimensional representations attached to
the application form show the progression of the star-shaped object and are stills taken from the
animated sequence.”—for operating system software in Class 9, owned by Microsoft Corporation.
Touch
The feel of a product can be distinctive, but examples of tactile marks are rare.
Exceptions are:
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UNDERBERG in Braille (German Reg. No. 30259811, Mar. 12, 2003)
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American Wholesale Wine & Spirits, Inc.’s registration for “a velvet textured covering
on the surface of a bottle of wine” (U.S. Reg. No. 3155702, Oct. 17, 2006)
Taste
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Taste trademarks have been hard to protect, as trademark offices have argued that taste
does not act in a trademark sense.
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Organon’s attempt to register the taste of orange for pharmaceuticals was rejected in the
United States.
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Eli Lilly’s application to register the taste of artificial strawberry flavor as a Community
trade mark was rejected by the OHIM examiner, whose decision was upheld by the Board
of Appeal. In the EU, a taste mark is examined in the same way as all other marks, so it
must be capable of graphical representation (i.e., meet the criteria set out in the
Sieckmann scent case).
Touch and Taste — Australia
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“Texture” and “taste” both fall under the definition of a “sign.” A trademark is a sign, and
so, in theory, it is possible to apply to register such trademarks in Australia.
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It appears that no such marks have been registered in Australia.
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The same principles apply for registrability: The “texture” or “taste” mark must be capable
of distinguishing the goods or services of one trader from those of another.
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There must be a clear description of the trademark and/or a visual representation of it.
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The examiner’s manual states: “While ‘taste’ arguably falls within the definition of a sign, it
is difficult to determine how a taste or flavour could serve to distinguish an applicant’s
goods. It may often not be practical (or hygienic) for a customer to taste goods prior to
selection and purchase. Tasting the goods after purchase does not seem to meet the
requirements of denoting a trade source.” Trade Marks Office Manual of Practice and
Procedure Part 21.10.