Nontraditional Marks

Traditional Definition of a Trademark• 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 MarkSome 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:

• 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 — EULibertel 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 — EUHeidelberger 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.”

• 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• 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.

• 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 StatesThe 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:

•The Coca-Cola bottle

•Apple’s iPod

•AT&T’s globe design

Shapes — EUKoninklijke Philips Electronics NV v. Remington Consumer Products Ltd (Case C-299/99

(ECJ June 16, 2002)):

• 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.”

• “[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

• Accepted • Rejected

Coca-Cola bottle

Bang & Olufsen loudspeaker

Philips three-headed rotary shaver

Dishwasher tablet

Shapes — Japan• 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%.

• 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.

• 4,782 applications and 1,929 registrations for three-dimensional marks (1997–Dec. 2010).

• Acquired distinctiveness is normally necessary.

• Example case: Coca-Cola bottle.

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Trademarks

3D Trademarks

Shapes — Japan

• Inherently distinctive- Distinctive without submitting any evidence of

use of the trademark.

• Acquired distinctiveness- Trademarks that were initially rejected for

lacking distinctiveness but were ultimately registered following sufficient evidence proving use of the trademark.

Trademarks

Designated goods/ services

Summary & Analysis

Class 30 Manju (Japanese confectionery)

Rejected in 2006The 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 11Mini searchlight

Registered June 2007The 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 32Plastic bottles

Registered May 2008As 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 2008The 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 three-dimensional trademarks than trademarks that consist mainly of functional shapes.

Class 3 Bleaching preparations and other substances for laundry use and cleaning

Registered in April 2011This 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 2011As 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• 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.

• 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).)

• 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).)

• 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• 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 — EUShield Mark BV v. Joost Kist h.o.d.n. Memex (Case C-283/01 (ECJ Nov. 27, 2003)):•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) .•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.”•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.) •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• 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• 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.

• 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 — EURalf Sieckmann v. Deutsches Patent- und Markenamt (Case C-273/00 (ECJ Dec. 12, 2002)

• Application for an olfactory mark for “methyl cinnamate.”

• 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.”

• An odor sample in a container was also provided.

• 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.

• 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• 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.

• Pending Application No. 1446529, for “lemon grass” in respect of health spa services in Class 44.

• 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.

• As of May 31, 2012, ten applications had been filed for scent marks, of which one mark had been registered and one was pending.

MotionExamples 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• 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:

– 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.

TouchThe feel of a product can be distinctive, but examples of tactile marks are rare. Exceptions are:

•UNDERBERG in Braille (German Reg. No. 30259811, Mar. 12, 2003)

•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• Taste trademarks have been hard to protect, as trademark offices have argued that taste

does not act in a trademark sense.

• Organon’s attempt to register the taste of orange for pharmaceuticals was rejected in the United States.

• 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• “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.

• It appears that no such marks have been registered in Australia.

• 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.

• There must be a clear description of the trademark and/or a visual representation of it.

• 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.