Garry Trillet

Master student at CEIPI, University of Strasbourg, France

Table of content

1. Introduction ..................................................................................................................................... 3

2. Smell marks ..................................................................................................................................... 6

3. Color marks...................................................................................................................................... 8

3.1. Single color, a color alone, color per se and more ....................................................................... 8

3.2. Combination of colors ................................................................................................................ 11

3.3. Acquired distinctiveness or secondary meaning ........................................................................ 12

3.4. Conclusion .................................................................................................................................. 13

4. Sound marks .................................................................................................................................. 14

5. Conclusion ..................................................................................................................................... 17

6. Limitations and further research ................................................................................................... 20

Bibliography ........................................................................................................................................... 21

3

1. Introduction

“A trade mark can be described as a sign or symbol placed on, or used in relation to, one trader’s

goods or services to distinguish them from similar goods or services supplied by other traders.”1

Trademark2 is often perceived in a traditional sense as a two-dimensional word, slogan, symbol etc.

employed to distinguish a product or service. Indeed, about 106,000 trademarks applications (2011)

were filed at the Office for Harmonization in the Internal Market (OHIM)3 where the vast majority of

Community Trademarks consists of word marks (60.79%) and figurative marks (38.39%).4

In today’s world, companies have to be creative and stand out from their competitors to remain in a

good market position. Companies must invest, besides a word trademark, into so-called non-

traditional trademarks, such as smell, sound and color marks applied, for example, on the products

packaging to make it depart significantly from the sector’s norms. Indeed, “in order to have a viable

future, brands will have to incorporate a brand platform that fully integrates the five senses”,5 where

“virtually any perceptible feature in the sensory world can be used to attract custom”.6 Moreover,

marketing and branding methods are growing into a farfetched way as companies start to surf on the

social media movement of our information society.7 Besides, traders also invest into the circulation

of the brand image like Apple which registered its cube-shaped glass store in New York.8

However, traders need to be careful, as educating consumers to associate a particular color, smell,

sound, etc. with a brand demand huge expenditures in marketing and communication, where

“cleverness alone does not ensure legal protection”.9 Also, non-conventional trademarks (NCTMs)

pose a “marketing dilemma”, using them in a sensory marketing could sound the “legal death knell”

for the trademark itself as it will not fulfill its source indicator function.10

New technologies brought the possibility to exploit a different type of marks and globalization has

stimulated the utilization of these non-verbal signs because of their autonomy from linguistic

1 Hart, T., Fazzani, L. and Clark, S., 2009. Intellectual Property Law, 5

th ed., Palgrave Macmillan, chapter 8, p. 79.

2 Throughout this work, trademark and mark will be used to refer to both trademarks and service marks.

3 OHIM Annual Report 2011, Available from:

http://oami.europa.eu/annualReport_2011/pdf/AnnualReport_2011_EN.pdf [Accessed 7 April 2012]. 4 Statistics on Community Trade Marks 2012. Available from:

http://oami.europa.eu/ows/rw/pages/OHIM/statistics.en.do [Accessed 7 April 2012]. 5 Lindstrom, M. 2005. Brand sense: Build Powerful Brands Through Touch, Taste, Smell, Sight, and Sound. Free

Press, New York, p. 3. 6 Vaver, D. 2005. Recent Trends in European Trademark Law: Of Shape, Senses and Sensation. TMR, 95(4), p.

897. 7 Anon., 2011. Non-Traditional Trademarks: Trademark a Shape, Sound, Color, Design, Scent, or Motion.

Available from: http://tcattorney.typepad.com/ip/2011/08/non-traditional-trademarks-trademark-a-shape-sound-color-design-scent-or-motion.html [Accessed 28 April 2012]. 8 U.S. Trademark Reg. No. 4021593.

9 Gilson, J. and LaLonde, A. G., 2011. Getting real with nontraditional trademarks: what’s next after red oven

knobs, the sound of burning methamphetamine, and goats on a grass roof?, TMR, 101(1), p. 187. 10

See supra note 9, p. 217.

4

overtone.11 These modern marks are recurrently employed in the global market place nowadays, but

a worldwide valid trademark does not exist as registration is territory-based.12

On the other hand, these “new trade mark forms”13 represent one of the most important changes in

trademark law and one significant concern for policy-makers is to guarantee that (intellectual

property) laws continue to match with technological improvements.14

Back to the basics, trademarks play an important role in our society. Trademarks have plenty of

functions, but two are preponderant15. The first is the indication of trade origin (“badge of origin”

function), seen by the European Court of Justice (ECJ) as the essential function. 16 Indeed, trademarks

allow consumers to distinguish goods/services of a company from those of another. Thus, they

encourage brand owners to produce high-quality goods under a certain sign. This also protects

consumers from being misled into buying the wrong product. The second is the “psychological”

message/brand image. This especially applies in markets where goods are not so differentiated

where consumers make purchase choices relying also and mainly on the “brand image” of the mark.

The European Union (EU) law protects both functions of trademarks.

At the EU level, trademarks are regulated by the Directive 2008/95/EC17 (TMD) and the Regulation

207/200918 (CTMR). These laws codified19 and repealed respectively the Directive 89/104/EC20 and

the Regulation 40/94.21 The former aspires at harmonizing substantive national laws of the EU

Member States and the latter established a regional system for trademark. This Community

Trademark (CTM), granting exclusive rights of a unitary character22 enforceable in the entire Union, is

managed principally by the OHIM, the Union’s trademark office23. Both documents provide for the

same substantive principles.

11

Firth, A. Signs, surfaces, shapes and structures – the protection of product design under trade mark law. In: Dinwoodie, G. B. and Janis, M. D., 2008. Trademark law and theory: a handbook of contemporary research. Cheltenham: Edward Elgar Publishing, p. 499. 12

Annand, R. and Kemp, L., 2011. Global Registration - Where are We Now. TR, 101(1), pp. 94-99. 13

Ströbele, P., 2001. The Registration of New Trademark Forms. IIC, 32(2), pp. 161-182. 14

The Intellectual Property Office of Singapore Annual Report 2007/2008. Available from: http://www.ipos.gov.sg/NR/rdonlyres/D2C3002F-C804-45C4-A3F3-BDBB33083BE7/5742/IPOS_ARwebptD.pdf. 15

Such as identification, advertising, investment, quality function and goodwill carrier. 16

Case 1/81, ECJ, December 3 1981. For further information, see: Jen Yap, P., 2009. Essential function of a trade mark: from BMW to O2. E.I.P.R., 31(2), pp. 81-87 and Simon, I., 2005. How does "essential function" doctrine drive European mark trade law?. IIC, 36(4), pp. 401-420. 17

Directive 2008/95/EC of the European Parliament and the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (codified version), Official Journal L 299 of 8 November 2008. 18

Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (codified version), Official Journal L78 of 24 March 2009. 19

No substantial modification has been brought in the articles and in the numbers of the first articles. 20

Council Directive of 21 December 1988 to Approximate the Laws of the Member States relating to Trade Marks, Official Journal L 40 of 11 February 1989. 21

Council Regulation (EC) No 40/941 of 20 December 1993 on the Community trade mark, Official Journal L 011 of 14 January 1994. 22

Article 1(2) of the CTMR. For further info, see: Von Muhlendahl, A., 2008. Community trade mark riddles: territoriality and unitary character. E.I.P.R., 30(2), pp. 66-70. 23

Community trademark application may be filed before the national, Benelux office of intellectual property or before the OHIM. Besides, to register a trademark internationally, the Madrid protocol

5

In order for a sign to be validly registered, it must be included in the definition of a registrable mark

and not excluded by one of the absolute nor relative grounds of refusal.24 The definition is open-

ended and thus permits the registration of unusual marks. Article 2 of the Directive and 4 of the

Regulation set two requirements for an insignia25 to be considered a trademark. Firstly, the sign must

be capable of being represented graphically, i.e. be visualized in two or three-dimensional form.26

Secondly, the sign must be capable of distinguishing the goods/services of one trader from those of

another, i.e. enable consumers to realize that distinction (distinctive character or distinguishing

capability). These, seen as “formal and substantive requirements for trademark registration”,27 are

present in all states now.28 They also remain of application for NCTMs, where EU law does not

provide for different nor stricter criteria to evaluate the registrability of NCTMs than with traditional

marks, insofar as distinctiveness is involved.29 Nevertheless, “non-traditional marks may be less

readily accepted by the average consumer as indications of trade origin”30 and face issues in practice.

The comprehensive application of articles 4 and 7 CTMR is laid down in the OHIM’s Manual of Trade

Mark Practice and is detailed infra.31

Following from above, words and numbers are surely capable of graphic representation, but what

about smells, colors, sounds and other NCTMs? They are abstractly registrable because of the very

broad and non-exhaustive definition of a trademark, yet EU judges (OHMI, General Court and ECJ)

are very restrictive in granting registration.32 Therefore, still nowadays, applicants for NCTMs have to

break tremendous barriers to register them in practice, barriers comparatively rarely faced by

traditional word or logo marks.

The terms non-conventional or non-traditional trademarks commonly all refer to color, sound/aural,

smell/scent/olfactory, aroma, shape, motion, hologram, tactile/feel and taste marks, which may

further be subdivided as visible and non-visible accordingly. These marks tend to appeal to the other

24

Articles 2, 3 and 4 of the Directive and articles 4, 7 and 8 of the regulation. The relative grounds, which refer to grounds for refusing registration (or invalidating registered trademarks) if their use conflicts with earlier rights, will not be examined. 25

Note that it can be also said that another requirement is that a feature seeking trademark protection need to be a “sign”. 26

This requirement should not be confused with the "visibility requirement” of a trade mark that the TRIPS Agreement offers to its Member States (art. 15(1)). In this respect, the EU law seems to be less rigid by “only” requiring of a feature to be a sign capable of being graphically represented to be registrable (plus the Sieckmann requirements). 27

Jaconiah, J., 2009. “The Requirements for Registration and Protection of Non-Traditional Marks in the European Union and in Tanzania” IIC, 40(7), p. 757. 28

Ahuja, V.K. 2010. Non-traditional trade marks: new dimension of trade marks law. E.I.P.R., 32(11), p. 575. 29

Case T-119/00, Procter & Gamble Company v OHIMI, ECJ, September 19 2001 and Joined cases C-53/01 to 55/01, Linde AG, Winward Industries Inc. & RadoUhren AG, para. 49, ECJ, April 8 2003. 30

Trade Mark Application No. T0618780H. Decision of the Intellectual Property Office Of Singapore Republic Of Singapore, March 7 2011. Par. 11. Available from: http://www.ipos.gov.sg/NR/rdonlyres/D7C9EDDC-C5EA-4FB2-BB53-091F915F2632/20125/6.pdf. 31

The Manual Concerning Proceedings Before The Office For Harmonization In The Internal Market (Trade Marks And Designs), Part B Examination, Section 7. Available from: http://oami.europa.eu/ows/rw/pages/CTM/legalReferences/guidelines/OHIMManual.en.do. 32

Anon., 2009. Tough stance taken on non-traditional marks in Europe. World Trademark Review, 21, p. 5. Available from: http://www.worldtrademarkreview.com/issues/Articles.aspx?g=41a8c2b2-76a6-4132-8535-377f7791e117&sp=news .

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human senses than just the sense of sight33 and this fact must not render them ineligible for

protection.34

Against this background, the following research question is formulated:

Registrability of smells, colors and sounds: how to overcome the challenges dressed by the

requirements of graphical representation and distinctiveness within EU law?

Using case-law from EU but also from various jurisdictions and a multi-disciplinary perspective, it will

be sought to demonstrate ways for such trademarks to be regarded as registrable in light of EU law.

Indeed, such unconventional marks today will eventually become the conventional mark of

tomorrow. The following chapters respectively deal with olfactory, sight and aural senses marks.

2. Smell marks

Olfactory memory represents one of the strongest and more reliable kinds of human memory but is

in the meantime the most unused mean to link brand to consumers, where for example smell of

roses may improve memory.35 Smells have also the ability to recall pictures and emotions and this

may affect consumers’ comportment and purchase decision-making. It can be held that once

distinctive, a smell is one of the most powerful manners to differentiate goods from one trader from

those of another.36 One needs to be careful of inter alia the ambient scent-effect on purchasing

behavior (aromachology) which, while offering a potent marketing asset to the brand owners who

register such scents, raises ethical issues.37 However, a 2011’s study contests the effectiveness of this

scent-effect.38

Traders successfully registered the smell marks such as the smell of freshly-cut grass39, bitter ale and

roses for tennis balls, darts’ flight and tires respectively. However, an ECJ’s ruling changed the odds.

When looking at the issues faced by NCTMs, the landmark case to thoroughly consider is the Ralf

Sieckmann v Deutsches Patent- und Markenamt,40 where the criteria of graphical representation of a

trademark were assessed. The applicant sought registration for a smell “balsamically fruity with a

33

Aplin, T. and Davis, J., 2009. Intellectual property law: text, cases and materials. Oxford University Press (OUP), Oxford. 34

Ong, B. The trademark law provisions of bilateral free trade agreements. In: Dinwoodie, G. B. and Janis, M. D., 2008. Trademark law and theory: a handbook of contemporary research. Cheltenham: Edward Elgar Publishing, p. 499. 35

Carey, B. 2007. Familiar scents improve memory during sleep. Available from: http://www.nytimes.com/2007/03/08/health/08iht-sleep.4847539.html [Accessed 29 April 2012]. 36

Maier, T. J., 2000. Trademarking the senses: smell marks and other non-traditional marks. Available from: http://www.postgrant.com/2012/01/trademarking-the-five-senses-smell-marks-and-other-non-traditional-marks.html [Accessed 29 April 2012]. 37

Bradford, K. D. and Desrochers, D. M., 2009. The Use of Scents to Influence Consumers: The Sense of Using Scents to Make Cents. Journal of Business Ethics, 90, pp. 141-153. 38

Teller C. and Dennis C., 2012. The effect of ambient scent on consumers' perception, emotions and behaviour: A critical review. Journal of Marketing Management, 28(1), pp.14-36. 39

Case R 156/1998-2, Vennootschap onder Firma Senta Aromatic Marketing Application, OHIM’s Second Board of Appeal, Febreuary 11 1999. Not registered anymore as not renewed. 40

Case C-273/00, ECJ, December 12 2002.

7

slight hint of cinnamon”. He represented its scent by three methods, namely by a verbal description,

a chemical formula and the submission of a specimen of the smell.

In its assessment, the ECJ firstly held that a sign which is not able per se to be identified by the sense

of sight may qualify as a trademark if it possesses a distinctive character and if it can be depicted

graphically, especially using pictures, lines or characters for example.41 In other words, the ruling

made clear that “signs capable of being represented graphically are not limited to those signs which

can be perceived visually”.42 Hence, the graphic representativeness shoulders an important

character. The Court went on to say that the graphical representation must be “clear, precise, self-

contained, easily accessible, intelligible, durable and objective”.43 The latter is known as the

Sieckmann seven-fold test, for which the Court did not provide much guidance on what they stand

for and how they are satisfied in practice. Indeed, the aim behind the graphic representation

criterion is to empower a sign to be depicted visually in order for the scope of protection of the mark

to be precisely determined44 by the competent authorities, traders and the public at large, by

consulting the public registry, ensuring legal certainty. Accordingly, the Court eventually held that

none of the manners to represent graphically the scent was satisfactory, neither separately nor in

combination. However it is argued that the combination of these methods should not be set apart, as

they, together as a whole, fulfill the test even if separately each method does not comply with all the

criteria.

In the aftermath of this case, the ECJ made the registration of scent marks practically almost

impossible as argued by many scholars45 but not totally for others.46 Moreover, the lack of an

internationally acknowledged classification system for scents renders impracticable the granting of a

trademark without the smell complying with the Sieckmann test. Noteworthy, olfactory

measurement methods such as spectrogram, (gas) chromatogram47 and electronic nose have not

been deemed adequate but registration should follow this lead.

Besides all this, the smell still needs to be distinctive, in the sense that it must serve as a trade origin

indicator (doubtful until now as people smell differently), not be the outcome of the nature of the

product itself, creating another hindrance as this is the scent rather than the scented substance or

chemical molecule.

To sum up so far, in order to qualify for registration, a feature has to constitute a sign,48 be distinctive

(either inherently or through use),49 and have the ability to be graphically represented (albeit the sign

41

Par. 45 and 46 of the judgment. 42

See supra note 27, p. 781. 43

Par. 55 of the judgment. 44

Par 46 and 47. 45

Bainbridge, D. I., 2004. Smell, sound, colour and shape trade marks: an unhappy flirtation?. J.B.L., pp. 219-246 and Vaver, D., 2005. Unconventional and well-known trademarks. Singapore Journal of Legal Studies, p. 7. 46

Karapapa, S., 2010. Registering Scents as Community Trade Marks. TMR, 100(6), pp. 1335-1359. 47

Although the ECJ did not exclude this method in Sieckmann case because being outside its seisin. 48

Definition is as open as the one of a mark. A sign is “anything which can convey information”, Mr. Justice Jacob in Philips Electronics NV v Remington Consumer Products Ltd [1998] E.T.M.R. 124 at 198. For further information, see: Davis, J. Between a sign and a brand: mapping the boundaries of a registered trade mark in European Union Trade mark law. In: Bently, L., Davis, J. and Ginsburg, J. C. 2008. Trade Marks and Brands: An Interdisciplinary Critique. Cambridge University Press, pp. 65-91. 49

See Arsenal Football Club plc v Reed, Case C-206/01, ECJ, November 12 2002, at par. 48.

8

itself does not have to be visually perceptible), such representation has to comply with the

Sieckmann test (rather questionable) and the sign may not be considered by the TMD50 or the

CMTR51 to be a sign that should be freely available for everyone to use52 (rather unquestionable,

known as the requirement of legitimacy, i.e. desirability of protection as a trademark).53 The

depiction and description, which sustain an intertwined relationship54, have to explicitly display the

nature of the mark, whose features are sufficiently precise to allow a suitable examination and

identification of the scope of protection once registered. Already stated supra, no stricter criteria to

assess distinctiveness may be applied in theory to NCTMs. However, as the average consumer55 is not

naturally accustomed to deduce the origin of goods or services from NCTMs, the distinctiveness test

may be harder to pass in comparison with word or figurative marks.56 For unconventional marks, an

accurate description of the mark is of uppermost importance

Although Sieckmann sought the registration of a scent mark, the decision resulting into the so-called

Sieckmann requirements also apply to all intangible marks.57 Therefore, a closer insight on color and

sound marks is given in the following chapters.

3. Color marks

3.1. Single color, a color alone, color per se and more58

“It’s easier to catch the consumer’s eye with color than with words”59

Color constitutes a mighty and efficient instrument for generating memory and especially corporate

or brand recognition/identification, once registered.60 They are registrable in the abstract (i.e. not

spatially defined) or as applied to the outside appearance or to the packaging of the goods.

50

Article 3.(1)c). 51

Article 7.(1)c). 52

Windsurfing Chiemsee, Joined Cases C-108/97 and C-109/97, ECJ, May 4 1999. 53

Cohen Jehoram, T., Van Nispen, C. and Huydecoper, T. 2010. European Trademark Law: Community Trademark Law and Harmonized National Trademark Law. Kluwer Law International: The Netherlands, p. 72. 54

Inter alia, the description should refer back to the depiction and both define the nature and scope of the trademark. 55

Figurative person reasonably well informed and reasonably observant and circumspect (Case C-210/96, ECJ, July 16 1998, at par. 31) but who but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them kept in his/her mind (Case C-342/97, ECJ, June 22 1999, at par. 26). The average consumer’s notion is used in matters of registrability, invalidity and infringement. For further information, see: Davis, J., 2005. Locating the average consumer: his judicial origins, intellectual influences and current role in European trade mark law. Intellectual Property Quarterly, 2, pp. 183-203. 56

Deutsches Patent- und Markenamt. 2009. Submission by the Delegation of Germany. Available from: http://www.wipo.int/sct/en/comments/pdf/sct21/ref_germany.pdf [Accessed 25 April 2012]. 57

See supra note 6, p. 902. 58

A bureaucratic requirement is to specify that the mark to be registered is a color (or smell or sound) mark, otherwise it would qualify for word or figurative mark and for particular classes of goods or services. Therefore, the registration of one color does not give an exclusive right to its owner on all products or services. For example, British Petroleum does not possess such right to utilize the color green on all goods but exclusively on service stations. 59

Rizzo, S. In Jones, C. 2006. Color ownership - why it makes sense. M.I.P., 158 Supp (Brand Management Focus 2006), pp. 10-13.

9

As already thought by Bainbridge in 2002,61 in order to surmount the issue of graphic representation

for a single color, two solutions would be (i) to provide a sample of the color to be registered or (ii) to

identify the color employing a recognized referencing system such as the Pantone Matching System,

RAL or Focoltone system. After LiberteI, the United Kingdom opted for the Bainbridge’s second

solution.

Less than ten years ago, the ECJ shed lights on the question of the registrability of colors as a

trademark in the landmark case Libertel Groep BV v Benelux-Merkenbureau.62 In this ruling, Libertel,

a Dutch telecommunications group, tried in vain to register the color orange as a trademark. The

issue referred to the ECJ was therefore whether a color per se was capable of having distinctiveness

with regard to specific goods or services.

The ECJ held, reiterating the Sieckmann requirements, that the registration cannot be accepted. In its

reasoning, the ECJ assessed the two requirements for a sign to qualify as a trademark. The ECJ

explained firstly that the mere reproduction of the mark consisting of the color orange in a rectangle

together with a description of the mark simply as “orange” on a piece of paper is not enough, as such

a color sample may damage through the years, therefore not complying with the durability

requirement. It affirmed however that a written description of the color does amount to a graphical

representation. Secondly, the Court acknowledged that, although color per se has few abilities to

convey a precise message to the public, in theory, they could fulfill the “badge of origin” function. To

conclude, the Court said that the written description of the color together with a sample of the latter

is registrable, provided the other (Sieckmann) requirements are fulfilled. In the same vein, the

requirements are met if the color and the relevant shade are described by mean of reference to an

international identification code.

In this respect, the OHIM estimates the provision of a color sample obligatory whereas color codes

are not mandatory to comply with the Sieckmann requirements as electronic files do not discolor

over time. In practice, however, and in order to support the admissibility of the application,

reference is made to color codes system (see supra) to represent graphically a color. Following from

the latter and as electronic filing (CTM E-Filing) has now become commonplace (79.99%) within the

OHIM,63 it is suggested that such method of application, which permits conveying electronic images,

should be generalized for color marks, avoiding the fading issue.

Practically, the Court established that a single undelimited color is registrable as long as it fulfills the

formal and substantive requirements for registration. The ECJ’s standpoint is fixed: a single color may

function as a trademark if used with respect to goods.64 Nonetheless, an issue with the registration of

a color is that it will face the hurdle that smell, sound and other modern marks face: single color

60

Maeyaert, P. and Muyldermans, J., Registered color marks shown to be powerful tools. WTR Daily. September 9 2011. Available from: http://www.worldtrademarkreview.com/daily/detail.aspx?g=40ec0255-45bf-4da0-901b-cd837b6a1cd6&q=%22color+marks%22#search=%22%22color+marks%22%22 and De Clercq, K., 2012. Belgium: Boost for color marks. M.I.P., 217, pp. 157-158. Available from: http://www.managingip.com/Article/2987104/Boost-for-color-marks.html. 61

Bainbridge, D. 2002. Intellectual Property Law. 5th

ed., Pitman Longman, pp. 642-643. 62

Case C-104/01, ECJ, May 6 2003. 63

See supra note 4. 64

See supra note 27, p. 768.

10

cannot be inherently distinctive and in some cases cannot acquire distinctiveness or secondary

meaning through use.65

In other words, except in extraordinary situations,66 colors per se are registrable in principle only if

there is compelling evidence of acquired distinctiveness through use as a marketing tool67 and they

are widely employed so as to cease to be descriptive68 (see infra).

Noteworthy and also valid for other NCTMs, the ECJ (both in Libertel and Heidelberger Bauchemie)

stressed that attention has to be devoted to the general interest in not excessively restraining the

accessibility of colors to competitors.69 Indeed, the distinctiveness test envelops the extent to which

basic single colors (especially in the fashion industry) and signs in general are likely to be

needed/relied upon by other traders (current and prospective) in the normal course of business.70 If

signs are needed/common, they are prima facie registrable. However, if signs are needed/common

in the relevant business, their registration would be challenging and their acceptance lead to

situations of monopoly and distortion of competition (though this could arguably be said for all

trademarks).71 Indeed, for undertakings working in a certain type of industry (like robotic industry,

see KUKA infra), only a small range of colors is available to differentiate wares and services. Hence,

granting a monopoly to use a particular color to one trader, i.e. exclusive right preventing others

within the same industry to use the protected color, would constitute a restriction of the business’

freedom of others companies and would also arguably be against fair competition principle. The

latter refers to the color depletion theory72 under US law and to a lighter expression of the EU “need

to keep free” doctrine.73 This notion needs to be taken into account but seems however to be a non-

binding factor upon trademark offices which are not compelled to reject an application on the

ground that there exists a risk of monopolization of a color or a drastic restriction on its availability in

term of forms or variations to other businesses. Furthermore, the aforementioned doctrine, absent

from both TMD and CTMR, has not been distinctly declared as being included in EU trademark law

and the case-law is not coherent on this issue.

65

See supra note 9, p. 189. 66

Situations where the applicant has to show that the mark is categorically atypical in regard to particular goods, e.g. where the amount of products is restricted and the pertinent market specific. See supra note 31, Section 7.6.4.2. 67

Von Mühlendahl, A., 2011. Single color marks held to be invalid despite surrender. WTR Daily. June 01 2011. Available from: http://www.worldtrademarkreview.com/daily/detail.aspx?g=251e6bfb-2eae-4991-a6af-575f00901f46&q=%22color+marks%22#search=%22%22color+marks%22%22. 68

See supra note 28, p. 577. 69

Commonly known as the requirement of availability of colors. Par. 54 and 56. 70

The Registrar of Trade Marks v W & G du Cros Ltd [1913] AC 624, at par. 634 and American Screw Co’s Application (TORQ-SET) [1959] RPC 344, at par. 346, where Lloyd Jacob J held that “Part B of the Register is intended to comprise marks which in use can be demonstrated as affording an indication of trade origin without trespassing upon the legitimate freedom of other traders.” 71

See supra note 59. 72

In Qualitex Co. v. Jacobson Prods. Co., Inc., 514 U.S. 159 (1995), the Supreme Court ultimately held that this theory is unpersuasive. For further information, see: Gorman, D. E., 2012. Protecting Single Color Trademarks in Fashion after Louboutin. 30 CARDOZO ARTS & ENT. L. J. (forthcoming May 2012). 73

Phillips, J., 2005. Trade Mark Law and the Need to Keep Free. IIC, 36(4), pp. 389-400 and Davies, J., The Need to Leave Free for Others to Use and the Trade Mark Common. In: Phillips J. and Simon, I., 2005. Trade Mark Use. Oxford University Press.

11

3.2. Combination of colors

Combination of colors does not represent a great challenge for registration and is registrable in a lot

of countries. Indeed, the distinctiveness of a TM consisting of two or more colors is readily shown, as

there exists a lesser need for other organizations to employ particular multi-colors marks. The

requirement of availability of colors is less present here because a monopolization of a color

combination does not hinder competitors from using the single colors constituting such a

combination.74 Nevertheless, the graphic representation criterion for combination of colors still

creates challenges.

In Heidelberger Bauchemie GmbH’s Trade Mark Application,75 the central question referred by the

German Bundespatentgericht (Patent Federal Court) to the ECJ was whether colors or combinations

of colors formulated in the abstract and contourless are capable to qualify as a trademark and satisfy

the conditions for capability of constituting a trade within the meaning of Article 2 of the TMD.

The ECJ reaffirmed that colors (single or combination thereof) in theory may function as trademarks.

It further determined two requirements to assess whether undelimited combination of colors may

amount to a trademark. Colors or combination of colors are registrable if they firstly depict de facto a

sign (see Sieckmann supra), as colors are generally “simple property of things”, devoid of the ability

to transmit any meaning. Also, applicants have to demarcate the scope of the protection sought in

order to comply with the precision and durability criteria of the graphic representation. Therefore,

the simple juxtaposition of colors in every imaginable way does not amount to a precise graphical

representation as such “representations would allow numerous different combinations”.76 Indeed, as

an analogy, protection for a word mark is not secured for all the letters separately but for the letters

in combination. It follows that a color mark is not enough precise if it claims to comprise all sort of

combinations of color.77 Secondly, combination of colors is registrable if there exists a “systematic

arrangement” for utilizing the colors in a “predetermined and uniform way”78 in the registration

application. The reasoning behind this is that it would be tough to prove distinctiveness if two or

more colors are not combined in a particular pattern. Nevertheless, the latter does not involve that

contours or any kind of spatial limitation must be used for neither color combination nor color per

se.79

In other words, applicants should include in their applications a sample of the colors together with a

description employing a globally recognized identification code arranged in a systemic and

predetermined way in which the colors’ distribution is clear from the graphical depiction and

74

Markiewicz, M. and Dynowski, P., 2011. Can color be a trade mark?. Available from: http://www.twobirds.com/English/News/Articles/Pages/Color_Trade_Mark.Aspx [Accessed 30 April 2012]. 75

Case C-49/02, ECJ, June 24 2004. 76

Par. 34 and 35. 77

Gielen, C. and Von Bomhard, V., 2011. Concise European Trade Mark And Design Law. Kluwer Law International, p 13. 78

Par. 1 of the operative part of the judgment. 79

Fhima, I. S., 2012. Trade marks: Chocs away for registration of Cadbury's purple. JIPPL, 7 (3), p. 155.

12

matches with it.80 Still, no clear direction was provided as to the satisfactory extent of systematic

arrangement to be reached by applicants.81

3.3. Acquired distinctiveness or secondary meaning

Colors’ acquired distinctiveness may be evidenced in several ways as mentioned below. In assessing

the distinctive character of a mark, regards have to be given to the Windsurfing Chiemsee82 case

which remains a primary source in which the ECJ laid down some direction relating to the

requirements necessary for a showing of a factual distinctiveness of a sign.83

Simply put, a mark becomes distinctive through its use as soon as the mark achieves a point as to

identify a ware as coming from a peculiar organization and therefore differentiating it from other

organizations’ wares. The Court went on to state that the conditions to register a mark are met

provided that the competent authority discovers that an important part84 of the relevant public85

recognizes goods as emanating from a specific company by reason of the trademark. In this respect,

similar to the US Seabrook test of inherent distinctiveness, the perception of marks by the average

consumer is of crucial relevance when assessing the ability of signs to serve as trademarks.86 Indeed,

proof needs to be given that the relevant public has been cultured to identify the origin of the

goods/services by inference from the mark in casu. The context of the use as well as how the mark

has been used must be shown. Evidence criteria of secondary meaning are inter alia information

about the market share, the advertising and the turnover figures.87

Practically, to register a single color (but also a color combination to a lesser extent), applicants need

to strengthen their chances by collecting valuable evidence, maintaining a register of everything,

educating the public that the color is the applicant’s trademark, utilizing it in commercials, making

sure that the branding and marketing is coherent and precluding other traders from using the color.88

Eventually, to prove distinctiveness by use in the marketplace, the most adequate and precise

method is to conduct a consumer survey, 89 whose outcomes mirror a link in the consumer’s spirit

between the trademark and the producer. This method obviously lends itself to any other trademark

distinctiveness’ assessment mutatis mutandis. Nevertheless, proving acquired distinctiveness is

80

See supra note 77. 81

See case R 355/2007-4, Andreas Stihl AG & Co. KG, OHIM’s Fourth Board of Appeal, November 30 2009 and case R 1296/2006-2, Caterpillar, Inc.’s Application, OHIM’s Second Board of Appeal, March 15 2007. 82

Joined Cases C-108/97 and C-109/97, ECJ, May 4 1999. 83

UK IPO Manual of trade marks practice, section “Evidence of Distinctiveness Acquired through Use”. Available from: http://www.ipo.gov.uk/pro-types/pro-tm/t-law/t-manual.htm [Accessed 29 April 2012]. 84

There is no fixed outcome percentage at EU level to show whether distinctiveness is demonstrated. But by analogy, one would expect a degree of awareness not inferior to 50% (as it is in Germany). For further information, see: Gevers, E., 2008. “To Prove”: Testing the Truth Evidence and Surveys in TM cases, the EU perspective. Available from: http://www.ecta.org/IMG/pdf/gevers_text_1_.pdf. 85

As trademark is territorially-based, the relevant public is the one of the country in which distinctiveness of a mark is claimed, so for example the BENELUX or the EU for a BENELUX or EU application respectively. 86

Procter & Gamble Company v OHIM, Joined Cases C-468/01 P to C-472/01 P, ECJ, April 29 2004, at par. 36. 87

Coleman, V., 2010. Evidence and Proof of Use in Trade Mark Proceedings Before the UKIPO and OHIM. Available from: http://www.dyoung.com/article-evidence [Accessed 29 April 2012]. 88

Denny, J., 2011. United Kingdom - Cadbury’s color victory and its best practice pointers. WTR Blog November 17 2011. Available from: http://www.worldtrademarkreview.com/daily/detail.a spx?g=0d95daec-5004-477c-a598-29589e01e214#search=%22%22. 89

Tongg, D. B., 1996. The Qualitex Quandary: Was Trademark Protection For Color Per Se Clearly Resolved? 18 U. Haw. L. Rev., pp. 445-481.

13

difficult and expensive and has to be done prior the filing date of the application,90 but the Max

Planck Institute (MPI)’s study91 proposed that the requirements of registrability and distinctiveness

must also exist at the registration date, i.e. post-filing date, secondary meaning should be

accepted.92

Finally, it is argued that color marks have overcome the problem that shape marks93 still face: the

average consumer is now used to infer origin of a product from its color. Indeed, consumers can

differentiate a specific good or service from the color as it is the case of the worldwide famous lilac

color (violet) for Milka chocolate94 and the blue color for gas cans.95 Still, the capacity of a specific

single color to serve as a trademark needs to be assessed on a cautious case-by-case basis

assessment. Recently, the OHIM decided that the red for high-heeled shoes outsoles96 was

registrable as that color is distinctive in the sense that it deviates “significantly from the norm or

customs of the sector” where outsoles for high-heeled shoes are generally black, brown or beige”.97

However, quite surprisingly, the validity of this color mark is currently being challenged in the USA.98

3.4. Conclusion

Only few cases on the registrability of single colors have been dealt with since Libertel. The EU’s

restrictive approach is mirrored by recent cases such as KUKA Roboter GmbH v OHIM99 and Wilo SE v

OHIM.100 The former case was seeking in vain the registration of “a shade of orange” for "articulated

robots" and the later the registration of green and brown for “cosmetics”, both colors declared to be

commonplace in the sector in question by the General Court. In KUKA, the Court brought anew to

mind that the requirement of availability of colors is apt to represent and remain an obstacle to color

mark registration.

90

Article 3(3) TMD. 91

Knaak, R. and Venohr, P (Max Planck Institute for Intellectual Property and Competition Law). 2011. Study on the overall functioning of the European trade mark system. Available from: http://ec.europa.eu/internal_market/indprop/tm/index_en.htm [Accessed 29 March 2012]. 92

See supra note 91, p. 79. 93

The ECJ nor the General Court are eager to allow shape marks registration as they are not convinced that the average consumer is actually able to perceive a shape as an indication of origin as some recent rulings show. See Joined Cases C-344/10 P and C-345/10 P, Freixenet SA v OHIM, ECJ, October 20 2011. See also cases T-336/08, T-337/08, T-346/08 and T-395/08 Chocoladefabriken Lindt & Sprüngli AG v OHIM and case T-13/09 August Storck KG v OHIM (shape of a chocolate bell, rabbit, reindeer and mouse). 94

For further information, see: Cermák, K., 2002. Distinctive Color Trademarks May be Registered. Available from: http://www.internationallawoffice.com/newsletters/detail.aspx?g=4d1db93c-e848-4a6e-88ac-adce7d99eb99. 95

Drewsen, A., 2001. Letter of submission to Libertel Groep B.V. on July 6, 2001 in the trademark case. Libertel Groep B. V. v. Benelux Merkenbureau (ECJ - C— l04/01). Available from: http://www.inta.org/Advocacy/Documents/INTALibertelBenelux.pdf [Accessed 24 April 2012]. 96

OHIM’s decision in case R2272/2010-2 of 16 June 2011 (Semelle rouge), overruling the judgment of 22 June 2011 of the Court of appeal of Paris Louboutin v Zara, which annulled Louboutin French trademark. 97

The Registry of the OHIM’s Board of Appeal. Yearly overview of important decisions – 2011. Available from: http://oami.europa.eu/ows/rw/resource/documents/OHIM/OHIMPublications/boa_case_law-2011.pdf [Accessed 16 March 2012] p. 12. 98

Kabak, M. L., 2012. Are Color Trademarks Valid?: A Sneak Peek at Louboutin's Appeal for Trademark Protection for Red Soled High Fashion Heels Available from: http://www.sanfranciscobusinesslawyerblog.com/2012/04/is-louboutins-red-sole-for-womens-shoes-a-valid-trademark.html. 99

Case T-97/08. 100

Cases T-282/09 and T-329/09.

14

However, a recent failed opposition procedure by Nestlé SA against Cadbury Ltd to register a shade

of the color purple in the United Kingdom delivers valuable direction on the accurate manner to

register single color. In casu, evidence of “strong market share, intensity and consistency of use of

the color with the product, longevity of use and strict branding guidelines for licensees formed the

foundations of Cadbury’s case”,101 keeping the same spirit as Libertel.102 The latter, though not being

ground-breaking, demonstrated that if a color is used and if the public is sufficiently aware of it, this

color may qualify for trademark protection, whereas acknowledging that the threshold to register a

color alone is very high and not easy to satisfy. Indeed, as inherently incapable of distinguishing,

numerous and thorough proofs of acquired distinctiveness will be required. The triggering element

which set the balance towards Cadbury was the relevant public perception, evidenced through a

consumer survey.103

As shown supra, NCTMs face tremendous challenges in acquiring a trademark registration, especially

a CTM one. Nonetheless, in a glimmer of hope, the MPI’s study provides for a thoughtful change in

relation to acquired distinctiveness for NCTMs. The Institute proposes to reform the CTM system in a

way that the assessment of acquired distinctiveness of NCTMs is not done by demonstrating factual

distinctiveness separately for each Member State of the EU, as it is presently the case,104 but by

considering the Union in its wholeness, and not simply as an addition of its Members. Moreover, the

principle of unitary rights of the CTM perceiving the EU as one single market is deeply disregarded by

such a country-by-country evaluation.105

Eventually, applicants should be as precise as possible to successfully register color marks. They

should make sure to comply with all the “seven steps to registration heaven”,106 especially with the

precision and durability ones. However, all the work to graphically represent the color is done for

nothing if the color or color combination is not able to be distinctive.107 Nonetheless, even though

going beyond its international obligations by allowing registration of single color108 and conforming

to the US practice, the EU is still reluctant to allow registration for colors and other unconventional

marks.

4. Sound marks

Sound plays also a deeply significant role into the trademark recognition. Sound is everywhere,

sound is present in commercials since the inception of electronic media and sound goes beyond

languages.109 Indeed, for example, music jingles are frequently used in advertising and consumers do

remember such sounds when it comes to buying goods and services (aural/echoic memory).

101

See supra note 88. 102

See supra note 79. 103

See supra note 88. 104

This highlights a huge pitfall of the CTM, which is both a time and money-consuming process to prove prior use from a trader’s perspective. 105

See supra note 91, p. 269. 106

Vaver, D., 2005. Unconventional and well-known trademarks. Singapore Journal of Legal Studies, p. 5. 107

McLeod, C., 2005. “EC: trade marks - combination of colors” E.I.P.R., 27(1). 108

TRIPS, article 15(1) mainly. 109

McCormick, K. 2006. “Ding” You Are Now Free to Register That Sound. TMR, 96(5), p. 1102.

15

According to Kahn, the “sound can immediately convey source-indicating qualities”110 and opting for

an aural source indicator appears to be a clever business decision. Moreover, to the benefit of

traders using it, music is the most influential known type of sound that affects human emotional

state, 111 hence consumers’ behavior and purchase decision-making. Consequently, sounds, as “non-

textual source-identifiers” may not be descriptive and function as trademarks and may be perceived

in that way by the average consumer.

Although being nowadays trite in the United Sates, sound marks in Europe are not. Indeed, as an

example, famous and very effective US sound marks are the five-tone audio progression of the notes

A B C E D of McDonald, joined with the sequence “ba da ba ba ba”112 and the Nokia ringtone,

consisting of a classical guitar score113 played worldwide 1.8 billion times a day.114

As a comparison, the lion’s roar of Metro-Goldwyn-Mayer has been registered in the US115 since 1986

for films, only since 2008 as Community Trademark116 and very recently in Canada117 (which

constitutes a huge change towards registration of sound marks in Canada). Not a lot of sound marks

are registered although being approved in those states.

At EU level, the leading case is Shield Mark BV v Kist.118 Shield Mark registered successfully inter alia

the first nine notes of Beethoven's “Für Elise” and a Dutch-speaking cockcrow as trademarks. Kist

infringed upon these marks which pushed the trademark owner to sue him. The depictions of these

marks were diverse. Principally, one included a musical stave with the first notes of “Für Elise” and

others merely included the words "the first nine notes of Für Elise” and "Kukelekuuuuu".119 The

questions raised by the Dutch Supreme Court were whether sounds may be trademarked and if so,

whether they were able to be graphically represented and how. The ECJ held that sound signs are not

per se unfit to distinguish goods and services of one company from those of another and therefore

that article 2 of the TMD has to be understood as “meaning that sounds may constitute a trade mark,

on condition that they may also be represented graphically”.120 So, the Court stated that signs

embodying sounds or noises may not be refused trademark protection if they pass the

distinctiveness and Sieckmann test (and on the condition they meet the other administrative

requirements).

However, applying the Sieckmann criteria in casu, the Court affirmed that a written description of a

sound is not sufficiently clear or precise and therefore does not render possible to define the scope

of the protection being sought. Therefore, the latter did not amount to graphic representation. In

relation to the description of a sound merely by an onomatopoeia, the ECJ rules that such a

110

Kahn, E. W. 1998. On the ’Net, Unusual Marks Gain in Importance, The National Reporter C-13. 111

Treasure, J., 2009. The 4 ways sound affects us. Available from: http://www.ted.com/talks/julian_treasure_the_4_ways_sound_affects_us.html [Accessed 29 April 2012]. 112

U.S. Trademark Reg. No. 2939936. 113

U.S. Trademark Reg. No. 3288274. 114

See supra note 111. 115

U.S. Trademark Reg. No. 1395550. 116

CTM 005170113. 117

Hall, D., 2012. MGM’s Lion’s Roar Announces the Advent of Sound Marks into Canadian Trade-mark Law. Available from: http://www.dww.com/?p=3690 [Accessed 25 April 2012]. 118

Case C-283/01, ECJ, November 27 2003. 119

The mark incorporated the onomatopoeia "Kukelekuuuuu," corresponding to "cock-a-doodle-do" in English. 120

Par. 36 and 37 of the Shield Mark case.

16

description lacks of precision and clarity, thus failing to be a valid graphic representation, as

uncertainty existed as to know if the protection sought was whether for the “onomatopoeia itself, as

pronounced, or the actual sound or noise”.121 In other words, the Court eventually held that music

notes on a music score may be registrable whereas an onomatopoeic description of a cockcrow will

not.

The Court further stated that the Sieckmann criteria are fulfilled if the representation of a musical

tune consists of 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 [sharps, flats and

naturals]”122 and if that representation is a reliable illustration of the sequence of sounds composing

the tune.

This case appears to be a victory for the proponents of sensory marks. However, depictions,

encompassing musical notes, are only adequate for musical compositions. In so doing, the Court,

which did not foresee non-musical sounds in its reasoning limited, in a way, the amount of

prospective sound marks.123 Nevertheless, the high-handed character of this ruling appears to

suggest that the guidance provided is comprehensive, valid for all type of sounds.124 Moreover, it is

argued that the ECJ’s hypothesis that a musical score is easily accessible and intelligible is erroneous

because it assumes, as a norm that registers’ examiners possess a musical literacy knowledge, which

is short even on modern famous songwriters.125

As for colors, the main obstacle to register sounds is the graphical representation requirement.

Indeed, sounds are invisible and an image is thus incapable to represent them graphically. The most

effective manner to illustrate a sound is by a recording, but the article 2 TMD forces candidates to

illustrate it graphically as well.126

Besides, different manners to comply with the graphic representation for sounds have been

developed.127 These involve, among others, the representations using spectrum, spectrogram,

sonogram and oscillogram. However, concerns have emerged as to whether they are too highly

technical or not or otherwise accessible and intelligible enough for the public at large.128

Until now, there is no ECJ’s ruling which involves the assessment of sonogram or oscillogram as a way

of graphical representations of sounds. Nonetheless, since 2005, the OHIM129, adopting a more

liberal approach, partly fixed the issue of graphic depiction of a sound. It allows the graphic

representation of non-musical sound marks by oscillogram or sonogram (provided they are clear

121

Par. 60 of the judgment. 122

Idem at par. 2 of the operative part of the judgment. 123

See supra note 106, p. 8. 124

Sahay, V. 2011. Conventionalising Non-Conventional Trademarks of Sounds and Scents: A Cross-jurisdictional Study. NALSAR Student Law Review, 9, p. 139. 125

See supra note 106, p. 9. 126

See supra note 77, p 12. 127

WIPO Magazine, 2009. Smell, Sound and Taste – Getting a Sense of Non-Traditional Marks. Available from: http://www.wipo.int/wipo_magazine/en/2009/01/article_0003.html [Accessed 30 April 2012]. 128

WIPO’s Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications: Nineteenth Session. 2008. Representation and Description of Non-Traditional Marks. Possible Areas of Convergence. Available from: http://www.wipo.int/meetings/en/details.jsp?meeting_id=15323. 129

Decision No Ex-05-3 of the President of the Office of 10 October 2005 concerning electronic filing of sound marks. Rule 3(6) of the Commission Regulation (EC) 2868/95 of December 13 1995 as amended.

17

enough) together with the attachment of a sound file being the sound itself in case of online

applications,130 thus recognizing such methods as valid. This represents a valuable effort but as the

Sieckmann requirements concern all kind of sounds, be it musical or not (noise), this tolerance should

extent to every sound marks.

At the International level, sounds may be represented by a musical score, a written description or

analog or digital recording of the sound itself, or any association of these. Like at the OHIM, an online

application may be accompanied by a digital file of the sound.131

While smells and colors are not inherently likely to be recognized by consumers as being employed

as a trademark for a specific product (see Sieckmann), sounds, on the other hand, may serve as

naturally distinctive source indicators,132 even though no ruling at the EU level has ascertained

whether sounds are considered to be so. It can be argued that sound marks most of the time may

acquire distinguishing capability through an intensive and longstanding use which allows the average

consumer to memorize them, consciously or not. In this respect, the standards of evidence of factual

distinctiveness explained above for colors apply mutatis mutandis to sounds and smells, for which

the consumer survey is the most accurate proof (see supra).

In conclusion of this point, it can be said that the EU offers a broader protection going beyond its

obligations under the TRIPS Agreement, 133 inasmuch as it does not provide Member States with the

possibility to refuse registration based solely on a sign not visually perceivable.134 Therefore, it can be

seen that the EU case-law endorses the reality that sounds, contrasting with smells, may be

graphically represented, the best way being by musical notation accompanied by a written

description if needed, and may function as trademark if they uniquely identify a particular set of

goods or services of one company. In practice, the “shorter, more uncommon and particular a

melody, the more distinctiveness it gets”.135 The OHIM keeps pace with technological advances by

allowing an electronic application to be joined by a digital file enclosing the sound itself in addition to

the sound’s graphic representation. Sounds thus may be registered, operate as trademarks and

deserve protection.136

5. Conclusion

Multi-sensorial marketing, emphasizing on the five human senses for commercial purposes, is in full

expansion as it leaves on consumer a valuable commercial impression. However, this marketing is

130

See supra note 31, Part B at section 7.6.1. 131

WIPO’s Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications: Nineteenth Session. 2010. Working Group On The Review Of Rule 3(4) To (6) Of The Regulations Under The Singapore Treaty On The Law Of Trademarks. Possible Areas of Convergence. Available from: http://www.wipo.int/meetings/en/details.jsp?meeting_id=20186. 132

See supra note 110. 133

Agreement on Trade-related Aspects of Intellectual Property Rights, Annex 1C of the Marrakesh Agreement Establishing the World Trade Organization, April 15 1994. 134

Article 15(1), sentence 3 of the TRIPS. 135

Bundi, M., 2009. August Storck KG v Swiss Federal Institute of Intellectual Property: Switzerland: trade marks - registration of acoustic marks without textual elements. E.I.P.R., 31(12), p. N84. 136

Butler, A. 2008. The smell of ripe strawberries: representing non-visual trademarks. Intellectual Asset Management (April / May, 2008), p. 7.

18

not in pace with the legal practice, where, as demonstrated throughout the present work, the

application and registration of NCTMs face great challenges in practice. This work stressed the need

for adequacy of the law with technological advances.

As it has been showed, trademarks may consist of unconventional marks such as smells, colors and

sounds. However, the criterion to cope with traditional137 types of mark, establishing that a mark has

to be capable of being graphically represented, critically confines the registration of those modern

marks.138 In order to comply with the Sieckmann requirements, a balance needs to be found. Indeed,

the techniques used to depict graphically a mark must be sufficiently specialized but not too highly

e.g. chromatography, as these alike methods are likely not to be clear, easily accessible and

intelligible enough to the average consumer/trader.139

The barriers to registration for NCTMs may be surmounted by the revision of the rules governing

trademarks at the EU level. Indeed, patent laws were modified140 in order to help applicants to better

disclose an invention by deposing samples of it. By analogy, trademark rules could be adapted to

lower the obligation to provide for graphical representations of the mark. In this regards, specimens

of colors, scents and tastes may be stored in the trademark offices, renewed on a necessary basis

and they may serve as satisfactory alternatives or supplements to the writing description of the

mark.141

As stated by Cohen Jehoram et al.,142 time will tell us if the ECJ, relying upon the requirements it

identified, was not too severe and whether its methodology remains up to date. Arguably, the ECJ

was mistaken to analogize the visual representation of a mark as demarcating the subject matter of

its protection, 143 as the trademark in itself is different from what is laid down into the registries.144

Ten years after Sieckmann, it seems that the ECJ’s approach is outdated,145 according to the Max

Planck Institute (MPI)’s study,146 which goes a step further and suggests the deletion of the graphical

representation requirement in EU trademark law,147 ending this thorny issue. It is argued that the

right attitude to follow should be to drop the graphic representation requirement because ill-

advised. This is very likely to lead to the development of more NCTMs, 148 one of the futures of

trademark law. Indeed, as rightly argued by Devaney, the relaxation of this problematic requirement

may prima facie seem probable to be favorable to modern marks’ registration, but it would not be

137

Burrell, R. and Handler, M., 2003. Making sense of trade mark law. I.P.Q., 4, pp. 388-410. 138

Sakulin, W., 2010. Trademark Protection and Freedom of Expression: An Inquiry into the Conflict Between Trademark Rights and Freedom of Expression Under European Law. Alphen aan den Rijn: Kluwer Law International. 139

See supra note 53, p. 118. 140

It is the case for biological and biotechnological inventions. 141

See supra note 6, p. 912. 142

See supra note 53, p. 75. 143

See supra note 137, p. 405. 144

Brown, A. E. L., 2004. Illuminating European Trade Marks. SCRIPT-ed, 1(1), pp. 46-57. 145

See supra note 91, p. 66. 146

See supra note 91. 147

See supra note 91, p. 264. 148

Burton, R., 2011. The Max Planck Institute Study - Overall Functioning of the European Trade Mark System. Available from: http://www.dyoung.com/article-maxplanck [Accessed 29 April 2012].

19

the case in practice (at least not immediately) as a mark still needs to be represented in a certain way

and passes the distinctiveness test.149

It is argued that a progressive change in the OHIM’s registration practices is a necessary evolution of

trademark law, supplanting tangible registers in favor of Web-based ones, which eventually would

allow smells and other unusual marks to be granted.150 Indeed, an OHIM lawyer claimed that “as

technology moves on we have moved too”.151 The office has allowed, besides the provision of

musical score, the e-filing of sound marks. This could extend similarly to smell marks, where

computer-generated smells samples produced with equipment such as “scent dome”152 could

complete a written description as soon as digital scent technologies become more widespread.153

More generally, as already thought by Bainbridge154 and now partly suggested by the MPI’s study,

transformations in the way trademarks are conserved in the registers would benefit unusual marks if

computing technologies are employed in order to record these marks reliably, rendering them

digitally available and playable upon request of online consultants of registers. This is possible

without amending the EU legal framework while updating it undoubtedly.

In the light of the above, it is argued that no valid motive should bar the way to the registration of

tomorrow’s conventional marks which are desirable, from the trader, economic and legal

perspectives, except inasmuch as the need to keep free doctrine is involved, necessary in order to

promote the free competition and movement within the internal market and to preserve the scope

of the public domain.155 But this doctrine falls short in front of the global competition. Therefore, it is

suggested that the EU’s restricted approach progressively aligned itself with the US’s liberal practice.

Not explored throughout the present work, the international trademark regime, mainly structured by

the TRIPS Agreement (offering an extensive trademark definition focusing on a mark’s distinctive

character) and the Paris Convention156 (PC), is not providing many answers to the issues raised by

modern trademarks to the exception of the recent Singapore Treaty (see infra). One way to register

internationally an unconventional mark would not be to comply but to circumvent the graphic

depiction criterion by relying on article 6 quinquies of the PC. Indeed, pursuant this provision, a

trademark registered validly in one country of the Paris Union cannot be refused registration in any

other country of the Union, except under specified conditions which do not include the requirement

of graphic representation. The latter involves that an undertaking which possesses valid

unconventional marks in its country of establishment is entitled to receive the same protection in

149

Devaney, M. 2011. The future for non-traditional trade marks in Europe. Intellectual Property Magazine, June 2011, pp. 32-33. 150

Depo, B. 2008. Protection of unconventional trademarks. Available from: http://amcham.pl/index.php?mod=page&page=6_c_iprc_2008_03_05 [Accessed 25 April 2012]. 151

Curtis, L., 2007. Outcry over Tarzan's yell prompts trade mark clarification. Available from: http://www.out-law.com/page-8657 [Accessed 26 April 2012]. 152

Knight, W. 2004. Smelly device would liven up web browsing. Available from: http://www.newscientist.com/article/dn4705-smelly-device-would-liven-up-web-browsing.html [Accessed 15 April 2012]. 153

See supra note 46. 154

See Bainbridge at supra note 45. 155

Kongolo, T., 2011. Intellectual property and misappropriation of the public domain. E.I.P.R., 33(12), pp. 780-794. 156

Paris Convention for the Protection of Industrial Property, March, 20 1883 as last revised at Stockholm, July 14, 1967.

20

other countries, notwithstanding whether the chosen state considers the marks as acceptable

according to its own laws. Therefore, the commonly called “telle quelle principle” enshrined in the

above article can be used as a “pipeline” to evade restrictive jurisdictions.157

So far, the willingness to allow registration of NCTMs was not global. 158 Nonetheless, the Singapore

Treaty on the Law of Trade Marks, revised rules of which came in force recently, has a promising

future for modern marks as it is expected to bring very laudable solutions (especially to the graphical

representation issue) in approximating the international community, encompassing the first express

hint to unconventional marks.159 Still, the road ahead for registration of NCTMs will continue to be a

crusade.

6. Limitations and further research

The so-called modern trademarks set lots of questions to numerous jurisdictions in relation to the

registration and the protection of those marks. One limitation of the work is that it aims to assess the

registrability of NCTMs under the EU framework only, as EU law is virtually identical to the trademark

law that must be individually implemented by Member States.160 Whereas in other jurisdiction such

as the United-States, the registration is quite liberal, therefore less challenging. Indeed, the Supreme

Court held that “almost anything at all that is capable of carrying meaning”161 is registrable. Or, in

India which mainly copied-pasted EU rules. 162

As a necessary corollary, the enforcement of such marks poses tremendous challenges.163 Indeed, as

an example, Pantone system catalogues more than 10,000 colors, whereas the human sight is not

able to distinguish all of these shades. So this brings the issues of when and how an infringement

does occur. Further research should then focus on that issue and on the more unusual of the

unconventional trademarks, such as texture, motion marks and holograms, which are still in their

infancy. Also, another challenging area of research is the way sensory marks are treated and

monitored on the internet, within virtual reality environment 164 and virtual world, places where the

greatest challenges are to take up in the following years for trade marks’ holders.

157

See supra note 27, p. 780. 158

Karki, M., 2005. “Nontraditional areas of intellectual property protection: colour, sound, taste, smell, shape, slogan, and trade dress” JIPR, 10(6), p. 500. 159

WIPO Magazine, 2006. Non-Traditional Marks – Singapore Treaty Enters into Force. Available from: http://www.wipo.int/wipo_magazine/en/2009/01/article_0002.html [Accessed 25 April 2012]. 160

See supra note 6, p. 899. 161

Qualitex Co. v. Jacobson Prods. Co., Inc., 514 U.S. 159 (1995). 162

See supra note 124, p. 141. 163

See Van Cooten, J.J.F.H., 2008. Sieckmann, Libertel en Shield Mark revisited. Aanleiding voor een nieuwe proefprocedure?. Intellectuele eigendom & reclamerecht, 24(1), pp. 5-9. 164

Wilson, C. 2007. Trade mark Law in an online future – coming to its senses?. Available from: http://www.law.ed.ac.uk/ahrc/gikii/prog07.asp [Accessed 24 April 2012].

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