[UK] Looking into non-traditional trademarks

July 21, 2018

Trademark a name

There is no worldwide set legal definition of a trademark but in the UK, the definition can be found in S.1(1) TMA 1994 which transposed the EU trademark directive into UK law. From the UK and EU definition of trademarks that there are three elements; it must be a sign, that is capable of being represented graphically, and must be able to distinguish itself from other goods.
A trademark is a powerful tool, figures suggest in the case of Google for instance, their trademark is estimated at $44billion, equating to 27% of the firm’s overall value. Considering these figures, it is no wonder that companies are pushing the boundaries by attempting to move away from traditional trademarks of words and logos, and instead moving to “non-traditional trademarks” such as smell, colours, holograms and even the layout of shops in the case of apple.

Sign
The expansion of the definition of trademarks to non-traditional marks can be seen firstly here, as not only words such as Tesco and Rolls Royce have been registered, names such as Justin Bieber in signatory form, numbers in the case of 1010, even the shape of a coca cola bottle, and the gesture of tapping a pocket in the form of Asda. Not every sign can be trademarked, as when Dyson attempted to trademark the shape of their vacuum cleaner, it was denied for attempting to obtain exclusive rights over that design.

Graphical Representation:
Arguably the most difficult criteria that a trademark needs to satisfy in order achieve registration, the mark must be able to be represented graphically in a 10cm x 10cm box via the relevant intellectual property office. Traditional trademarks such as words and phrases have no trouble with this aspect, however the question as to how a non-traditional trademark would be registered is in continuous debate.

Smell
After much debate, the question first began to be settled in 2002 in the case of sicekmann, in the most significant case dealing with expanding trademark definitions. The ecj held a trademark “may consist of a sign which cannot be perceived visually providing that it can be represented graphically” In order to do so, the representation satisfy the “Sieckmann 7”:

Easy accessible,
Precise,
Intelligible,
Self-contained,
Objective,
Durable,
Clear.

In sickemann, the trademark failed to satisfy these criteria even though they had written down the chemical formula as well as the full written name of “pure methyl cinnamate”, described the smell as “fruity with a slight hint of cinnamon” and also supplied a sample. In a further case to try and satisfy this criterion, (Eden v OHIM), a strawberry was illustrated in addition to try to gain an the trademark. However, this was held to fail as the smell of a ripe strawberry may vary from person to person. Chanel’s attempt to register its famous perfume “No.5” as an olfactory mark failed due to their entire product being the smell, which would create a monopoly. This shows within the EU, there is a very high threshold to get a smell mark registered, with only one successful case to date.
Worldwide the likelihood of gaining a smell mark is also small. In Australia only one has been granted and in the UK registrations for tires with “a floral fragrance/smell reminiscent of roses” and darts with “the strong smell of bitter beer” have been applied. The US has to date ten registered, such as “Flowery Musk Scent” in Verizon stores.
A company may try and obtain a trademark using colour. In Libertel, the colour orange was tried to be filed, along with the words Orange placed in capitals in the box. The court held that this could be allowed, however would have to use an internationally recognised colour chart, thus failed due to lack of precision. The decision may have been a public policy decision due to the Dutch national colour being orange where the trademark had been filed. According to Heidelberger Bauchemie, registering a combination of colours for a trademark is a more effective way to register, as long as the combination must be arranged systematically in a predetermined and uniform way which satisfies the Sieckmann criteria to make it registerable. Milka has successfully managed to trademark its specific colour for its confectionary, showing it is possible to register a colour as long as it is distinctive.

Colour
A company may try and obtain a trademark using colour. In Libertel, the colour orange was tried to be filed, along with the words Orange placed in capitals in the box. The court held that this could be allowed, however would have to use an internationally recognised colour chart, thus failed due to lack of precision. The decision may have been a public policy decision due to the Dutch national colour being orange where the trademark had been filed. According to Heidelberger Bauchemie, registering a combination of colours for a trademark is a more effective way to register, as long as the combination must be arranged systematically in a predetermined and uniform way which satisfies the Sieckmann criteria to make it registrable. Milka has successfully managed to trademark its specific colour for its confectionary, showing it is possible to register a colour as long as it is distinctive.

Sound
Registering a sound mark doesn’t present as many difficulties. In the 2004 case of Shield Mark, it was held that certain sounds cant be trademarked; a description of a cry of an animal, a simple onomattopia, or a sequence of notes. Certain sound famous sound marks have been registered since such as the “Nokia Jingle”. The OHIM has advised that a copy of the sound should be provided in MP3 format, which doesn’t loop, or exceed one megabyte to be successfully registered.

Future.
The implementation of the 2015 EU Trade Mark Directive in 2019 will remove this graphical representation point; and as such the definition of a trademark will be “capable of being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”. This definition effectively makes the decision in sieckmann enshrined in law which will enable the introduction of other non-traditional marks such as sound marks easy to register in mp3 format, although they will they will still have to clear the obstacle of distinctiveness. It is speculated that this update in the law will mean that the sky’s the limit for new types of trademark and that we could potentially see future trademarks include holograms and gifs.

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