CAN YOU REGISTER A TRADE MARK FOR

THE SMELL OF A HAMBURGER?

The registrability of "non-traditional" trade marks

Trade marks are badges of origin, showing consumers a link between the goods being sold and/or services
being provided and their owners. In South African law, trade marks can be separated into two distinct
categories: traditional and non-traditional. This article looks at how the latter can be protected.

First, what are non-traditional trade marks? Well, Section 2 of the Trade Marks Act 194 of 1993 defines a
mark as:

any sign capable of being represented graphically, including a device, name, signature, word, letter, numeral,
shape, configuration, pattern, ornamentation, colour or container for goods or any combination of the
aforementioned. My emphasis.

Here we see that devices (logos), names, signatures, words, letters and numerals are included in the definition
of mark, and are considered traditional trade marks. Examples include APPLE (the word) and its logo for
computers; the name JOHNNY WALKER for whiskey; the combination of letters and numerals in i20 or C200 for
land vehicles, etc.

The requirements for capability of being represented graphically were summarised by the European Court of
Justice (ECJ) in Sieckmann v Deutches Patent und Markenamt 2003 RPC 38, as:

Clear

Precise (detailed)
 Self-contained (independent)

Easily accessible

Intelligible (logical/understandable)

Durable (long-lasting)

Objective

But what about signs, like colours, containers, shape (3D) / configuration / pattern / ornamentation marks;
gesture marks, holograms, motion or multimedia marks; position or gesture marks; sound marks; olfactory,
taste and/or texture marks? Surely these stretch the boundaries of the term capable of being represented
graphically?

They do indeed. And yet, an example of a trade mark that has been registered in a foreign jurisdiction is the
growling sound of a Harley Davidsons exhaust.

In contrast, however, our South African trade marks register is a paper/electronic registration system, so how
would you represent, for example, a smell, taste or texture? The register does not allow for a smell, taste or
texture to be sampled, as it is impossible to exemplify these on paper or electronically.

In the Sieckmann case, the European Court of Justice (ECJ) found that, although a sample of a smell mark had
been deposited at the Trade Mark Registry; it was described as a chemical substance called 'methyl cinnamate';
and its chemical formula was provided, it did not constitute a mark because it was not capable of being
represented graphically.
In another case dealing with colour marks (i.e. the Libertal case), the ECJ was asked to decide whether a single
colour mark was capable of being represented graphically.

While the court accepted that colour marks could be represented graphically, it stated that an assessment was
required on a case-by-case basis, explaining that a mere sample of the colour would not be sufficient because
the precise shade of the colour on paper could not be protected from the effects of time.

Furthermore, the ECJ held that a mere description would not normally suffice and that an internationally
recognised identification code (like the Pantone colour code) might be needed to meet the graphic
representation requirement, because codes are considered precise and stable.

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