EMERGING TRENDS

IN
INTELLECTUAL PROPERTY LAW:

NON-CONVENTIONAL
TRADEMARKS

Shradha Diwan
Research Analyst
Institute of International Trade, Kolkata, India

Shradha.Diwan@gmail.com
Trademarks are traditionally understood as marks which uniquely identify the commercial
origin of products and services. A non-traditional or non-conventional trademark is a new
type of trademark which does not belong to the pre-existing exhaustive category of a
traditional trademark, and is often difficult to register, but which nevertheless fulfills the
essential criterion of being a trademark – uniquely identifies the commercial origin of the
product.

The conventional set of marks includes those consisting of letters, numerals, words, logos,
pictures, symbols, or combinations of one or more of these elements. Therefore, the non-
conventional marks are based on appearance, shape, sound, smell, taste, and texture.

Increasing commercial competition and a growing consumer society has forced brand
owners to innovate newer methods of outshining their competitors, thus augmenting their
own products with a distinctive edge.

The non-conventional trademarks have grown to be widely accepted in recent times as a

result of legislative changes which expand the definition of “trademark”. Such agreements
are a result of treaties like trade related aspects f intellectual property rights (TRIPS)
agreement, which sets down a standardized, inclusive legal definition.

Throughout the European Union, trademarks are protected by registering the mark as a
community Trademark with the office for harmonization in the internal market (OHIM).
The exclusive statutory right is governed by the Community Trademark Regulation
(CTMR), which is harmonized across the European Union through the EU Trademark
directive (TMD).

According to Article 2 of the TMD and Article 4 of the CTMR:

A Trade mark may consist of any sign 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

SMELL MARKS (also called SCENT MARKS)

Smell is one of the most potent types of human memory. Businesses are now showing
increasing interest in coupling their products with particular types of smells in order to
give them a distinctive edge. Smell marks are potentially capable of being registered as they
can indicate the commercial origin of goods and services. But in practice, it is very difficult
to fulfill the condition of graphical representation of a smell.

The United Kingdom’s first smell mark was granted to Japan’s Sumitomo Rubber Co. in
1996 for “a floral fragrance of roses as applied to tyres”. The mark was later transferred to

Shradha.Diwan@gmail.com
Dunlop Tyres. A Dutch company’s tennis balls with the scent of newly mown grass, and
Unicorn Products’ (a London-based maker of sports equipment) smell mark for darts with
“the strong smell of bitter beer”, are some examples where smell marks have been
successfully registered. However, the OHIM disagrees with the UK registrations.

The Sieckmann Criteria:

In trademark law, Sieckmann v German Patent Office (case 273/00) issued on December
12, 2002, is already a famous case concerning registration of non-traditional trademarks. It
is of a smell mark described as “balsamically fruity with a slight hint of cinnamon”.

In the application filed for the smell mark, it was clearly mentioned that registration was
sought for the olfactory mark (smell mark) of a pure chemical substance, methyl cinnamate
(= cinnamic acid methyl ester). The chemical formula was also written (C6H5-CH=
CHCOOCH3). Apart from this, a sample of the smell was also submitted. A graphical
description of the smell was also provided as mentioned above.

However, Sieckmann was refused a trademark by the German Patent Office on the ground
that it was doubtful whether the trademark was capable of being registered and of being
represented graphically.

The European Court of Justice ruled that the requirement of graphical representation was
not satisfied by the above measures i.e.

Scientific Formula
Description in written words
Depositing a sample of odor, or
A combination of these methods

This case paved the way for the famous Siekmann criteria which include granting
trademarks to those marks which can be represented graphically by the means of images,
lines or characters, where the representation must be clear, precise, self-contained, easily
accessible, intelligible, durable and objective.

The Sieckmann case has made it very difficult, if not impossible, to register smells as
trademarks. This case may be looked upon as the closing door for smell marks in Europe, at
least until a new method is developed to identify smell marks.

An additional obstacle to the registration of smell marks is that the smell must not be the
outcome of the nature of the good itself. For example, the scent of a perfume, being the
very essence of the product, cannot be registered as a trademark.

Shradha.Diwan@gmail.com
SOUND MARKS (Aural)

For sound marks, there have been alternate methods for the graphical representation of
sounds. These include – depictions by oscillogram, spectrum, spectrogram, and sonogram.

There are many sound marks registered in different countries around the world. Jingles,
such as the Nokia ring tone, “roar of a lion” used by MGM (where a sound sonogram or
spectrogram adequately represented the roar as it depicted pitch, progression overtime,
and volume), and the chime used by NBC, all have a distinctive character, and assist in the
identification of products, thus defining their commercial origin.

The EU has registered the signature tone of Nokia Corporation as below:

MGM’s “Roar of a Lion” is registered as below:

The European Court of Justice has specifically excluded written descriptions like the sign of
the notes making up the musical work, or the cry of an animal; onomatopoeia; or simply a
sequence of musical notes. However, the WIPO has agreed that “Offices may require that
the representation of sound marks consist of a musical notation on a stave, a description of
the sound constituting the mark, or an analog or digital recording of that sound – or of any
combination thereof. Where electronic filing is available, an electronic file may be attached

Shradha.Diwan@gmail.com
to the application. However, for some jurisdictions, only a musical notation on a stave may
be considered to adequately represent the mark”.

It was held that the seven Sieckmann requirements were satisfied by musical notation if it
is ‘represented by a stave divided into measures and showing, in particular, a clef, musical
notes and rests whose form indicates the relative values and, where necessary, accidentals
(sharps, flat, natural)’.

It is thus clear that, unlike smells, sounds can be represented graphically and are regarded
as trademarks worth being protected.

TASTE MARKS (Gustatory)

The SCT reports that “the graphic representation requirement was satisfied by using a
written description of the taste and an indication that it concerns a taste mark” – but the
hurdle of distinctiveness is even harder to overcome as are assertions concerning
functionality.

Pharmaceutical company Eli Lily’s attempt to register a trademark for the taste of artificial
strawberries was rejected by the OHIM stating that “Any manufacturer… is entitled to add
the flavor of artificial 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… Moreover, the taste is unlikely to be perceived by consumers as a
trademark; they are far more likely to assume that it is intended to disguise the unpleasant
taste of the product…”

In the Benelux countries there have been registrations of a few trademarks such as the
“taste of liquorice” applied to Paper goods and Printed matter, represented using a written
description.

However, registration of taste marks seems highly unlikely in the future if seen from the
perspective of the Sieckmann criteria.

MOVING IMAGES, HOLOGRAMS AND GESTURES:

The moving image can be a film clip, video, moving logo for TV shows, etc. The UK has
registered a moving mark for Kraft Foods UK Ltd. The mark has
a description which says: "The mark consists of the three-
dimensional shape breaking apart, as shown in the sequence of
still pictures attached to the form of application".

Shradha.Diwan@gmail.com
The Lamborghini’s doors are registered with the EU on the following description: "The
trademark refers to a
typical and characteristic
arrangement of the
doors of a vehicle, for
opening the doors are
"turned upwardly",
namely around a
swiveling axis which is
essentially arranged
horizontal and transverse to the driving direction".

One example of a registered

hologram is CTM 2117034, which
has the explanation: The letter VF
in white on blue spheres, the
name VIDEO FUTUR in blue on a
black background". (See picture
given alongside)

Mars BV has a registration in the Benelux Trademark

Register for a gesture of two cutting fingers. This
gesture is recognized as the commercial origin for
TWIX chocolate. BX No. 520574.

COLOR MARKS

In the United Kingdom, colors have been granted trademark protection when used in
specific, limited contexts such as packaging or marketing. The particular shade of turquoise
used on cans of Heinz baked beans can only be used by the H. J. Heinz Company for that

Shradha.Diwan@gmail.com
product. The UK and the EU have several registrations for colors: the Cadbury's purple for
chocolate, BP's green for vehicle service stations and Orange's registration for the color
orange for telecommunication services.

FEEL MARKS (Tactile marks)

Recognition may also be achieved by a single touch of a certain object. The glass bottle of
Coca Cola was designed in 1915 to also be recognized in the dark.

CONCLUSION

Other examples of non-conventional trademarks would also include a shape trademark

recognized in Europe is the protection granted to Toblerone, a company which
manufactures chocolate bars with a distinctive triangular shape.

The protection of non-conventional trademarks is still an under-developed part of

intellectual property law. It is often argued that such characteristics should not be allowed
to be monopolized. The tough criteria set in the Sieckmann case already have enough space
to prevent such monopolies, aiming to promote novel traders who wish to use novel signs
to market their products.

Those products who have managed to receive trademark registrations prior to Sieckmann
are surely going to have a tough time enforcing them. They now run the risk of being
declared invalid.

References: World Intellectual Property Organization – Online Resource Center

Shradha.Diwan@gmail.com