Smell, taste, sound, motion and colour
No, this is not an attempt to list the various senses, but an observation about a recent phenomenon in trade mark law: non-traditional marks. Traditionally, trade marks are signs - usually word marks or logos - used to distinguish the goods and...
No, this is not an attempt to list the various senses, but an observation about a recent phenomenon in trade mark law: non-traditional marks.
Traditionally, trade marks are signs - usually word marks or logos - used to distinguish the goods and services of one undertaking from those of another. However, through the power of advertising, consumers grow accustomed to other types of "marks", which become "household names". We therefore get used to the slogan, the shape and the colour of products.
This increased recognition by consumers spurs producers on to think that these new factors should be protected as trade marks in their own right. Companies have therefore applied to register these non-traditional marks, some successfully, others not. This is a very important development because there is a fine line that separates recognition by consumers and what trade mark law has established as being the grounds on which a trade mark can be protected. Consumer recognition plays a role in determining trade mark-able quality, but if recognition is the only criterion applied then all sorts of claims for trade marks will fill the register!
The following are examples of what is happening worldwide in this regard.
Trade mark law has accepted the possibility that there could be "olfactory signs". In other words, a smell could be a trade mark. Consumers smell a particular odour and recognise it as the smell of a particular product - the link is formed. This was tested in a German case which found itself before the European Court of Justice (ECJ) and which concerned the registrability of a particular smell for a perfume. The ECJ created a test to judge the eligibility of "dubious marks" using a number of factors, such as clarity and precision. Unfortunately, the perfume failed the test. However, other smells have been successfully registered. In 1999, VOF Senta Aromatic Marketing of Holland had the first community olfactory mark with "the smell of cut grass" for tennis balls. In the UK, Japan's Sumitomo Rubber Co. (later transferred to Dunlop Tyres) registered "a floral fragrance reminiscent of roses" for tyres, and Unicorn Products registered the "strong smell of bitter beer" for dart flights. On the other hand, Eden Sarl did not succeed in registering the smell of "ripe strawberries" for perfume and beauty products, since different strawberries had different smells. John Lewis (UK) also failed to register the smell of cinnamon for furniture.
Can taste indicate the origin of goods? In making this evaluation it is important that the taste is not descriptive of the product. Trade mark law favours marks that are distinctive. This would rule out taste marks for edible goods. But what about non-edible goods? Before conjuring images of people licking any odd number of items, think about paper products such as envelopes that taste of liquorice - as registered in the Benelux.
As far as sounds go, a number of sound marks have been registered successfully: Nokia's signature tune; Bach's Air On G-String for Hamlet Cigars; and the Direct Line jingle for Insurance Services. The application to register the first nine notes of Fur Elise as well as "kukeleku" ("cock-a-doodle-do" in Dutch) was partly successful. Basing itself on its previous test, the ECJ gave the Fur Elise's nine notes the thumbs up, however, the other failed.
Harley Davidson attempted to register the exhaust sound of their bikes, which purportedly sounds like "potato-potato-potato" but withdrew the application after years of opposition. Similarly, MGM studios applied to register the roar of their famous lion. The picture of the lion, roaring and framed by a film reel is already a trade mark.
This new application is for the roar itself and faces difficulties in as far as the graphical representation of the mark is concerned.
In motion, the trade mark is in the moving image. The UK has registered an orange breaking apart for Kraft's Terry's Chocolate Orange while the Office for Harmonisation of the Internal Market (OHIM) has registered the upward motion of doors for Lamborghini. More of a gesture than a movement is the mark registered by Mars BV in the Benelux which shows two fingers copying the motion of scissors for Twix chocolate. Asda's gesture mark was not as lucky in the UK, failing to register the gesture that has accompanied its adverts for years: people tapping their back pocket.
Colours are heavily used in brand promotion. At first, the fear was that by accepting colour marks we would eventually run out of colours. One could therefore understand the public interest in keeping colours available for use by all.
Then one day, the ECJ strayed from this colour-depletion theory, admitting that a colour, when used in conjunction with a word and/or a logo could convey emotions and create associations of ideas therefore functioning as an indication of origin for determined categories of goods/services.
Vodafone red is now an international trade mark, as is orange for Orange and Libertel - companies involved in telephony, and Tiffany blue for jewellery (boxes).
Cadbury, however, recently lost their Australian bid to register purple for chocolate products - but they haven't thrown in the towel just yet and are appealing.
• Dr Rizzo, LLM (Lond.), LLD, is associate with Fenech & Fenech Advocates
Traditionally, trade marks are signs - usually word marks or logos - used to distinguish the goods and services of one undertaking from those of another. However, through the power of advertising, consumers grow accustomed to other types of "marks", which become "household names". We therefore get used to the slogan, the shape and the colour of products.
This increased recognition by consumers spurs producers on to think that these new factors should be protected as trade marks in their own right. Companies have therefore applied to register these non-traditional marks, some successfully, others not. This is a very important development because there is a fine line that separates recognition by consumers and what trade mark law has established as being the grounds on which a trade mark can be protected. Consumer recognition plays a role in determining trade mark-able quality, but if recognition is the only criterion applied then all sorts of claims for trade marks will fill the register!
The following are examples of what is happening worldwide in this regard.
Trade mark law has accepted the possibility that there could be "olfactory signs". In other words, a smell could be a trade mark. Consumers smell a particular odour and recognise it as the smell of a particular product - the link is formed. This was tested in a German case which found itself before the European Court of Justice (ECJ) and which concerned the registrability of a particular smell for a perfume. The ECJ created a test to judge the eligibility of "dubious marks" using a number of factors, such as clarity and precision. Unfortunately, the perfume failed the test. However, other smells have been successfully registered. In 1999, VOF Senta Aromatic Marketing of Holland had the first community olfactory mark with "the smell of cut grass" for tennis balls. In the UK, Japan's Sumitomo Rubber Co. (later transferred to Dunlop Tyres) registered "a floral fragrance reminiscent of roses" for tyres, and Unicorn Products registered the "strong smell of bitter beer" for dart flights. On the other hand, Eden Sarl did not succeed in registering the smell of "ripe strawberries" for perfume and beauty products, since different strawberries had different smells. John Lewis (UK) also failed to register the smell of cinnamon for furniture.
Can taste indicate the origin of goods? In making this evaluation it is important that the taste is not descriptive of the product. Trade mark law favours marks that are distinctive. This would rule out taste marks for edible goods. But what about non-edible goods? Before conjuring images of people licking any odd number of items, think about paper products such as envelopes that taste of liquorice - as registered in the Benelux.
As far as sounds go, a number of sound marks have been registered successfully: Nokia's signature tune; Bach's Air On G-String for Hamlet Cigars; and the Direct Line jingle for Insurance Services. The application to register the first nine notes of Fur Elise as well as "kukeleku" ("cock-a-doodle-do" in Dutch) was partly successful. Basing itself on its previous test, the ECJ gave the Fur Elise's nine notes the thumbs up, however, the other failed.
Harley Davidson attempted to register the exhaust sound of their bikes, which purportedly sounds like "potato-potato-potato" but withdrew the application after years of opposition. Similarly, MGM studios applied to register the roar of their famous lion. The picture of the lion, roaring and framed by a film reel is already a trade mark.
This new application is for the roar itself and faces difficulties in as far as the graphical representation of the mark is concerned.
In motion, the trade mark is in the moving image. The UK has registered an orange breaking apart for Kraft's Terry's Chocolate Orange while the Office for Harmonisation of the Internal Market (OHIM) has registered the upward motion of doors for Lamborghini. More of a gesture than a movement is the mark registered by Mars BV in the Benelux which shows two fingers copying the motion of scissors for Twix chocolate. Asda's gesture mark was not as lucky in the UK, failing to register the gesture that has accompanied its adverts for years: people tapping their back pocket.
Colours are heavily used in brand promotion. At first, the fear was that by accepting colour marks we would eventually run out of colours. One could therefore understand the public interest in keeping colours available for use by all.
Then one day, the ECJ strayed from this colour-depletion theory, admitting that a colour, when used in conjunction with a word and/or a logo could convey emotions and create associations of ideas therefore functioning as an indication of origin for determined categories of goods/services.
Vodafone red is now an international trade mark, as is orange for Orange and Libertel - companies involved in telephony, and Tiffany blue for jewellery (boxes).
Cadbury, however, recently lost their Australian bid to register purple for chocolate products - but they haven't thrown in the towel just yet and are appealing.
• Dr Rizzo, LLM (Lond.), LLD, is associate with Fenech & Fenech Advocates