NON CONVENTIONAL TRADEMARKS

Generally, the term “nontraditional marks” covers marks,

other than word, figurative or complex marks, that are used to

identify products or services. Following are examples of

nontraditional marks:

Colour

Motion

Shape

Sound

Scent

Taste

Touch

Visible signs Non-visible signs

sound (audio)

smell (olfactory)

words, letters, numerals

drawings, colors

Hologram

Motion

shape

Core requirements

procedural:graphical representation(register transparency)

substantial: distinctive characterNon functional

Graphical Representation• Graphical representation of the sign must be such

representation of the mark that it can define the mark itself in order to determine the precise subject of the protection afforded by the registered mark to its proprietor.

• Next, the entry of the mark in a public register has the aim of making it accessible to the competent authorities and the public, particularly to economic operators.

• object of the representation is specifically to avoid any element of subjectivity in the process of identifying and perceiving the sign. Consequently, the means of graphic representation must be unequivocal and objective

that Article 2 of the Directive must be interpreted as meaning that a trade markmay consist of a sign which is not in itself capable of being perceived visually,provided that it can be represented graphically, particularly by means of images,lines or characters, and that the representation is

clear precise

self-contained,easily accessible,

intelligible durable

objective.

COLOUR MARKS

10/04/2023 8

PROBLEMS IF SINGLE COLOURS ARE REGISTERED

SHADE CONFUSION

COLOUR DEPLETION

ANTI DISSECTION

Single Colors — EULibertel Groep BV v. Benelux-Merkenbureau (Case C-104/01 (ECJ

May 6, 2003)):

•Application to register the color orange.

•The Court held that single colors marks are capable of constituting a sign and are eligible for trademark protection if they can distinguish goods of one undertaking from those of another and can be defined in a sufficiently clear way.

• To be acceptable graphic representation of the color must be “clear, precise, self-contained, easily accessible, intelligible, durable and objective” (these are known as the Sieckmann criteria). This condition may be satisfied “by designating that colour using an internationally recognized identification code,” such as Pantone is a precise and stable form of verbal description.

f• While considering the registration of colour per se as trademark private interest of a single trader has to be weighed against the public interest of not unduly restricting the availability of colours of all traders.

• Distinctiveness without prior use is unlikely to be present in a colour per se mark other than in exceptional circumstances. However acquired distinctiveness may be present.

• The examination of a EU national trademark application should be stringent to prevent trademarks from being improperly registered.

Heidelberger Bauchemie GmbH (Case C-49/02 (ECJ June 24, 2004)):

•The application was for registration of a trademark, the representation of which consisted of a piece of paper the upper part of which was blue and the lower part yellow. The following description accompanied the application: “The trade mark applied for consists of the applicant’s corporate colours which are used in every conceivable form, in particular on packaging and labels.” The application listed the colors under the Pantone® system.

• In order to fulfill its role as a registered trademark, trademark must be perceived precisely and unambiguously so that the function of the mark as an indicator of the origin is guaranteed.

•Applications for color combination marks must include “a systematic arrangement associating the colours concerned in a predetermined and uniform way.” Colour combination which is not spatially delimited is not sufficiently precise.

•Examination “must also take account of the public interest in not unduly restricting the availability of colours for other traders who market goods or services of the same type as those in respect of which registration is sought.”

Qualitex Co. v. Jacobson Products,514 U.S, 159,1995

United nations Supreme Court held that the Lanham Act was very broad in its definition of what a trademark could be and includes “ any word, name, symbol or device or any combination thereof so long as it acts to identify source of a particular object”.

Thus a colour could meet the legal requirements for trademark registration under the Lanham Act provided it has acquired secondary meaning in the market.

Though colours do not automatically evoke a connection to any product by themselves, they could take on a secondary meaning in the course of use in the market thus serving the chief purpose of trademark, that of identifying the source.

Functionality doctrine was no bar to the registration of colour as trademark

Colour could be trademarked separately from any trade dress protection.

SOUND MARKS

• Depends on aural perception of the listener which may be as fleeting as the sound itself.

• If a sound lingers in the mind of the listener and is so inherently different or distinctive that it causes the mind of the listener to be awakened when heard and

• the listener subsequently associates a source or event with that sound then the sound may be eligible for trademark.

Modes of graphical represntation

• Séquence of Musical notes • Sonogram• Audio tape recording• Onomatoepic description• Musical notation specifying

pitch and duration of sound• Electronic application with an

attached sound file.

Position in U.S.A

ROAR OF A LION, MGM

16

SOUND MARKS – E.U

Shield Mark BV v. Joost Kist h.o.d.n. Memex (Case C-283/01 (ECJ Nov. 27, 2003)):

• Shield Mark owned numerous Benelux trademarks for the first nine notes of Beethoven’s

“Für Elise” and the sound of a cock crowing

• The Court of Justice said a sound mark is registrable provided that “it can be represented

graphically, particularly by means of images, lines or characters, and that its representation is

clear, precise, self-contained, easily accessible, intelligible, durable and objective.Those

requirements are satisfied where the mark is represented by 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.

• Onomatopoeic description or mere sequence of musical notes would not be sufficient for

the purposes of graphical representation for the pitch and duration of the mark cannot be

determined by them.

Sound marks registered in India

• 3- note Yahoo Yodel

• ICICI’s Jingle

• Allianz’s sound mark

SMELL MARKS

examples

• Smell of rose for tyres• Smell of freshly cut grass for

Tennis balls• The odour of beer for dart flights • Smell of plumeria blossoms for

yarn• Smell of vanilla for office files• Cherry scent for synthetic

lubricants

Important Questions

• Whether the smell is an inherent attribute natural characteristic of the goods?

• Whether the smell added by the applicant is to identify the goods?

• Will the public regard the smell as sign which identifies the applicant’s goods?

• Is the mark represented graphically?

iIn Re Clarke , 17 U.S.P.Q 2d 1238(TTAB 1990)

• The Applicant was the only person marketing scented yarns and threads and had emphasized this characteristic of her goods in advertising

• Fragrance was not an inherent attribute or natural characteristic of the goods but a feature supplied by the Applicant

• Applicant promoted the scented nature of her goods in advertising

• Applicant demonstrated that customers, dealers and distributors of her products had come to recognize the Applicant as the source of these goods.

Dr. Ralf Sieckmann vs Deutsches Patent- und Markenamt ( 2oo2)

• C6H5-CH=CHCOOCH3(chemical formula)

• Description 'fruity balsamic smell with a slight hint of cinnamon'

• Deposit of sample

• Combination of these methods

H• Trade mark may consist of a sign which is not in itself capable

of being perceived visually provided it can be represented graphically.

• The graphical representation must enable the sign to be visually represented by means of images, lines or characters that it can be precisely defined

• Representation should be clear, precise, self contained, easily accessible, intelligible, durable and objective.

• in respect of an olfactory sign, the requirements of graphic representability are not satisfied by a chemical formula, by a description in written words, by the deposit of an odour sample or by a combination of those elements.

Shapes — EU — Examples

Coca-Cola bottle

Bang & Olufsen loudspeaker

Philips three-headed rotary shaver

Dishwasher tablet

CJEU, 14 September 2010, case C-48/09 P, Lego/OHIM (Mega Brands)

CJEU, 14 September 2010, case C-48/09 P, Lego/OHIM (Mega Brands)

For registration the proprietor of the shape mark must prove that his mark :

• is capable of being represented graphically• is capable of distinguishing goods of one trader from

those of another trader• is not devoid of any distinctive character or, if it is, has

acquired a• distinctive character through the use that has been

made of it• does not consist exclusively of the shape which results

from the nature of the goods themselves• does not consist exclusively of the goods which is

necessary to obtain a technical result; and• does not consist exclusively of the shape which gives

substantial value to the goods

yPhilips Electronics NV v. Remington Consumer Products Ltd (Case C-299/99 (ECJ June

16, 2002)):• A sign consisting exclusively of the shape of a product is unregistrable by

virtue if is established that the essential functional features of that shape

are attributable only to the technical result.

• Moreover, the ground for refusal or invalidity of registration imposed by

that provision cannot be overcome by establishing that there are other

shapes which allow the same technical result to be obtained.”

• In order to be capable of distinguishing an article for the purposes of Article

2 of the Directive, the shape of the article in respect of which the sign is

registered does not require any capricious addition, such as an

embellishment which has no functional purpose

• Extensive use of a sign which consists of the shape of those goods may be

sufficient to give the sign a distinctive character.

Procedural Requirements for Registering a Shape Mark in India

Procedural requisites for the filing of shape marks as trademarks are

outlined in The Trademark Rules, 2002. These include:

•A written description of the shape which is intended to be used as a

trademark along with a two dimensional graphic or photographic

representation of the mark presented in at least three different

angles of viewing;

•In case the registrar is not satisfied with the detail in the application,

the applicant may be asked to present the mark in five additional

angles of viewing and a further verbose description of the mark;

•In the case where the registrar is still not satisfied with the

application, the applicant maybe asked to submit a specimen of the

shape along with the application.