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Nontraditional Marks.

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Presentation on theme: "Nontraditional Marks."— Presentation transcript:

1 Nontraditional Marks

2 Traditional Definition of a Trademark
Consists of a word, a logo or a combination of both. The word or words may be invented or may appear in a dictionary. A mark may also consist of letters, numerals or a combination of both. A logo may be an abstract design, a stylization or a simple reproduction of an everyday object or image.

3 Definition of Nontraditional Mark
Some jurisdictions enable applicants to protect certain nontraditional marks. 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: Appearance (including color and/or color combination) Motion Shape Sound Scent Taste Touch A nontraditional mark is a new type of mark that does not belong to a preexisting, conventional category of trademark. Often it is difficult to register, but nevertheless it fulfills the essential trademark function of uniquely identifying the commercial origin of products or services. The term is broadly inclusive, as it encompasses marks that do not fall into the conventional set of marks (i.e., those consisting of letters, numerals, words, logos, pictures, symbols, or combinations of one or more of these elements) and therefore includes marks based on appearance, shape, sound, scent, taste and texture (touch). Nontraditional marks thus may be either visible marks (e.g., colors, shapes, moving images, holograms, positions) or non‐visible marks (e.g., sounds, scents, tastes, textures). Authorities on nontraditional marks include: Agreement on Trade‐Related Aspects of Intellectual Property Rights (TRIPS Agreement) U.S. Trademark Act (Lanham Act) U.S. Supreme Court comments ‐ Qualitex Co. v. Jacobson Products Co. U.S. Patent & Trademark Office precedent The McCarthy treatises Nontraditional Marks in Europe While member states of the European Union have a long tradition of trademark protection and case law, trademark law has been generally harmonized since the early 1990s. The Community trade mark (CTM) was launched in 1996 and in its early years was the subject of numerous test cases on the registrability of nontraditional marks that were decided by the OHIM Boards of Appeal and the General Court (formerly the Court of First Instance). Many of these concerned shape marks—in particular, dishwasher tablets. Meanwhile, a number of cases originating at OHIM, as well as disputes in EU member states, have been referred to the Court of Justice of the European Union (CJEU), formerly the European Court of Justice (ECJ), the EU’s highest authority on trademark law. A number of these concern nontraditional trademarks, even though the number of applications for these is very small compared to applications for traditional word and figurative marks. The extensive literature on nontraditional trademarks in the EU includes the following: Avv. Prof. Stefano Sandri and Sergio Rizzo, Non-Conventional Trade Marks and Community Law (MARQUES, 2003) (Sandri is a former member of the Boards of Appeal of OHIM); Trevor Cook, EU Intellectual Property Law (Oxford, 2010) (includes a list of relevant decisions from Luxembourg). In addition, INTA has published some commentaries on nontraditional trademarks in Europe, which are available on the INTA website, and there are many articles in the relevant journals and magazines. The key to the registrability of nontraditional marks is the requirement that marks be “represented graphically,” and many of the court decisions have addressed how this can be achieved with regard to nontraditional marks. Some authorities have suggested that this requirement be changed in the CTM Regulation (Council Regulation (EC) No. 207/2009 of Feb. 26, 2009), but it remains to be seen whether the EU member states will adopt such a change. The Court of Justice’s decisions have, in general, clarified the approach to nontraditional marks in Europe. However, there remain unanswered questions, particularly for holograms and motion marks. While in general the approach has been harmonized across OHIM and the national offices in the EU, some practitioners perceive differences between member states. Some also believe that OHIM takes a stricter approach to, for example, shape marks than do some national offices. Nontraditional Marks in Asia In Asia, registering nontraditional marks remains difficult in many countries; however, there has been progress in some jurisdictions, especially Japan. Although there is still no protection for nontraditional marks (i.e., color (without contours), sound, motion, taste, touch and smell marks) under the current law and practice in Japan, in May 2008 the IP High Court ruled that Coca-Cola’s contour bottle was distinctive, even without the COCA-COLA trademark displayed on it. Korea amended its Trademark Act in 2007 to allow for the registration of more nontraditional marks, such as motion, hologram and color marks, apart from colors that serve a functional purpose. Thailand has also seen some development in the area of nontraditional marks, with the Trademark Board overturning an examiner’s decision and allowing Coca-Cola to register a three-dimensional mark in Class 32. As in Japan, the Board had been very reluctant to allow registration of three-dimensional shapes of bottles. Coca-Cola also won a case in the Supreme Court at the end of 2008 over a different application, which was for a two-dimensional shape of a bottle. Proposed amendments to Taiwan’s Trademark Law include the introduction of new forms of trademarks such as smell marks, holograms and dynamic images. A geographical symbol will also be registrable as a certification mark or collective trademark if characteristics of the products concerned are attributable to the geographical origin. In Malaysia, brand owners are still waiting for amendments to the Trademark Law before they can register such nontraditional marks as sound, smell and shape marks. Nontraditional Marks in the United States See Trade Dress — perhaps the most common nontraditional mark to be registered and/or enforced. Product design trade dress requires evidence of acquired distinctiveness for protection and/or registration. Product packaging may be deemed inherently distinctive. Trade dress rights extend to restaurant and other retail store interior design and exterior design, as well as website design. Must prove nonfunctionality. Sound Marks — registrable. Examples of registered sound marks include the NBC chime and the MGM lion’s roar. Applicant must provide a specimen showing use of the sound in connection with the goods/services. Other examples at Three-Dimensional Marks — registrable. However, the applicant must be able to depict a single rendition of the mark in three dimensions. Color Marks Single-color marks require acquired distinctiveness for registration. Examples include the color brown for UPS; the color pink for Owens-Corning insulation; and “Tiffany blue” for jewelry. May be necessary to prove that the color is not functional. Require substantial evidence to prove acquired distinctiveness. Color combinations are registrable with a showing of acquired distinctiveness. Examples include the combination of green body and yellow wheels for John Deere agricultural machines. Require substantial evidence to prove acquired distinctiveness. Scent Marks — registrable where the product is not sold primarily for the scent (i.e., perfume). May be necessary to prove that the scent is not functional. Require substantial evidence to prove acquired distinctiveness. No graphic representation required for registration. Examples include the fragrance of embroidery thread.

4 Overview of Nontraditional Marks
Nontraditional marks remain quite rare: for example, for 1996–2012, 57% of Community trade mark applications were for word marks, 42% for figurative marks and just 0.02% for sound marks. There were only 10 applications for hologram marks and 7 for smell marks during that period. Proof of acquired distinctiveness often will need to be shown to secure registration of nontraditional marks. Other IP rights (e.g., design rights) may be useful in protecting nontraditional elements of brands in some jurisdictions. The OHIM statistics for CTM applications are available at Proofs of acquired distinctiveness can include the following (but may vary between jurisdictions): Customer, dealer and distributor testimony Advertising promoting the nontraditional mark Necessity for “image” or “look” for advertising Other types of advertising Extent of advertising exposure Unsolicited exposure Use of description of mark by consumers Licensed use of mark Anecdotal evidence Surveys showing distinctiveness Third-party use Industry practice Copying Confusion Particularly in the United States, there is also the possibility that nontraditional marks can be registered as inherently distinctive: Product Designs Inherent distinctiveness under Two Pesos Inherent distinctiveness under Wal-Mart The Two Pesos/Wal-Mart dichotomy Scents, Sounds and Motions Standards for inherent distinctiveness issue Standards Developed Prior to Wal-Mart Standards AfterWal-Mart Burden of proving inherent distinctiveness before the USPTO Proof of inherent distinctiveness

5 Appearance Appearance — This type of mark may include the color or combination of colors applied to the products themselves or to the packaging in which they are sold. It may be the graphical way in which the colors are represented or a combination of both. In the case of services, it could include the visual appearance, externally or internally, of a store or restaurant or the design of a menu card. Images, left to right: registered three-dimensional design of a Coca-Cola bottle; registered three-dimensional design of a Weber barbeque grill; registered trade dress of Pizza Hut restaurant building design (all refer to U.S. registrations).

6 Color — United States In general, the right to the exclusive use of a specific color as a trademark on product packaging has met with a mixed response in U.S. court cases. U.S. Supreme Court held color can qualify for trademark protection (Qualitex Co. v. Jacobson Products Co.). In a unanimous decision, the Court held that “a special shade of green-gold” functioned as a trademark for dry cleaning pads. For color to function as a trademark, it must be nonfunctional and have acquired distinctiveness. Specific cases denying color protection include: royal blue for ice cream packages (AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531 (11th Cir. 1986), cert. denied, 481 U.S (1987)); a series of stripes or multiple colors on candy packages (Life Savers v. Curtiss Candy Co., 82 F.2d 4 (7th Cir. 1950)); green for farm implements (Deere & Co. v. Farmhand, Inc., 560 F. Supp. 85 (S.D. Iowa 1982), aff'd, 721 F.2d 253 (8th Cir. 1983)); black for motors (Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527 (Fed. Cir. 1994), cert. denied, 514 U.S (1995)); and red for one-half of a soup can (Campbell Soup Co. v. Armour & Co., 175 F.2d 795 (3d Cir.), cert. denied, 338 U.S. 847 (1949)). A successful outcome was obtained in cases involving the use of the color red for cans of tile mastic (DAP Products, Inc. v. Color Tile Mfg., Inc., 821 F. Supp. 488 (S.D. Ohio 1993)) and a “special shade of green-gold" for dry cleaning pads (Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 161 (1995)). The right to exclusive use of a single color requires a showing of acquired distinctiveness and nonfunctionality. Functionality: a mark is functional if it is essential to the purpose of an article or affects the cost or quality of that article.

7 Single Colors — EU Libertel Groep BV v. Benelux-Merkenbureau (Case C-104/01 (ECJ May 6, 2003)): Application to register the color orange. The Court held that color marks are registrable based on acquired distinctiveness. Graphic representation of a color mark 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 recognised identification code,” such as Pantone®. Color trademarks have successfully been enforced in court in other European cases (e.g., BP Amoco PLC v. John Kelly Ltd). In Libertel, an application was made by the telecommunications company Libertel in the Benelux Trademark Office (now the Benelux Office of Intellectual Property) for registration of a trademark for the color orange in Classes 9, 35, 36, 37 and 38. The application did not include a color code. The Trademark Office refused the application on the grounds that the mark was devoid of distinctive character and that Libertel had not shown that it had acquired distinctive character through use. The Court of Justice ruled: 1. A colour per se, not spatially delimited, may, in respect of certain goods and services, have a distinctive character within the meaning of Article 3(1)(b) and Article 3(3) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks [the European Trade Marks Directive], provided that, inter alia, it may be represented graphically in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective. The latter condition cannot be satisfied merely by reproducing on paper the colour in question, but may be satisfied by designating that colour using an internationally recognised identification code. 2. In assessing the potential distinctiveness of a given colour as a trade mark, regard must be had to the general interest in not unduly restricting the availability of colours for the other traders who offer for sale goods or services of the same type as those in respect of which registration is sought. 3. A colour per se may be found to possess distinctive character within the meaning of Article 3(1)(b) and Article 3(3) of [the European Trade Marks] Directive …, provided that, as regards the perception of the relevant public, the mark is capable of identifying the product or service for which registration is sought as originating from a particular undertaking and distinguishing that product or service from those of other undertakings. 4. The fact that registration as a trade mark of a colour per se is sought for a large number of goods or services, or for a specific product or service or for a specific group of goods or services, is relevant[. The more goods and services that are sought, the stronger the public interest to keep the colour free for use by other traders. This is assessed], together with all the other circumstances of the particular case, to [evaluate] both the distinctive character of the colour in respect of which registration is sought, and whether its registration would run counter to the general interest in not unduly limiting the availability of colours for the other operators who offer for sale goods or services of the same type as those in respect of which registration is sought. In assessing whether a trade mark has distinctive character within the meaning of Article 3(1)(b) and Article 3(3) of [the] Directive …, the competent authority for registering trade marks must carry out an examination by reference to the actual situation, taking account of all the circumstances of the case and in particular any use which has been made of the mark. There are examples of successful enforcement of color trademarks in Europe’s trademark courts. For example, in a case decided by the Court of Appeal in Northern Ireland in February 2001, BP Amoco plc sued the owner of a rival service station, John Kelly Ltd, for infringing its UK trademarks for service stations colored with its distinctive green (Pantone 348C). The court addressed several issues, including the distinctiveness of the marks, and found that Kelly’s mark was infringing. BP Amoco PLC .v John Kelly Ltd, [2001] NICA 3 (Feb. 2, 2001).

8 Color Combinations — EU
Heidelberger Bauchemie GmbH (Case C-49/02 (ECJ June 24, 2004)): The applied-for mark comprised the colors blue and yellow for goods in Class 3. The following description accompanied the application: “The trade mark applied for consists of the applicant’s corporate colors which are used in every conceivable form, in particular on packaging and labels.” The application listed the colors under the Pantone® system. The decision is perceived as tightening the rules on color combinations. The application was refused because, without spatial delimitation, the combination of colors comprising the mark was not sufficiently precise. Applications for color combination marks must include “a systematic arrangement associating the colours concerned in a predetermined and uniform way.” 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.” This case arose from a German trademark application in which the applicant, Heidelberger Bauchemie GmbH, sought to register its corporate colors, blue and yellow, as a trademark. The section in the application headed “reproduction of the mark” comprised a rectangular piece of paper, the upper part of which was blue and the lower half yellow. The Court ruled: “Colours or combinations of colours which are the subject of an application for registration as a trade mark, claimed in the abstract, without contours, and in shades which are named in words by reference to a colour sample and specified according to an internationally recognised colour classification system may constitute a trade mark for the purposes of Article 2 of the [European Trade Marks] Directive … where: – it has been established that, in the context in which they are used, those colours or combinations of colours in fact represent a sign, and – the application for registration includes a systematic arrangement associating the colours concerned in a predetermined and uniform way.” The Court agreed with its holding in Libertel that the description and representation of a trademark must be such that owners and competitors are able to identify the extent of the claimed rights: “Even if a combination of colours satisfies the requirements for constituting a trade mark for the purposes of Article 2 of the Directive, it is still necessary for the competent authority for registering trade marks to decide whether the combination claimed fulfils the other requirements laid down, particularly in Article 3 of the Directive, for registration as a trade mark in relation to the goods or services of the undertaking which has applied for its registration. Such an examination must take account of all the relevant circumstances of the case, including any use which has been made of the sign in respect of which trade mark registration is sought. That 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.” There are only a limited number of colors in internationally accepted codes, so strong evidence will be required to show that the public would expect goods sold under a particular color to be the goods of one trader.

9 Color — Japan As a general rule, a single-color mark is not registrable under the Japanese Trademark Law because it lacks distinctiveness and is not able to distinguish the goods as originating from the proprietor. However, it is possible that a color mark can become distinctive based on use. It is more likely that a color mark will be registered if it is combined with a device or is in a configuration. It was concluded that the examples below satisfy these requirements because of the plurality of colors. It would be possible to register color trademarks as long as they are combined with a device or configuration, since “trademark” is defined as “ characters, figures, signs, three-dimensional shapes or any combination thereof, or any combination thereof and colors” under Article 2, Section 1 of the Trademark Law.

10 Color — Australia BP’s application to register the color green in respect of service stations was rejected. (Woolworths Ltd v. BP plc (No. 2), [2006] FCAFC (Sept. 4, 2006).) The evidence of use of the trademark in that case consisted of predominantly green, with some parts of yellow, which was not considered to support an application for just green being predominantly applied to different parts of a service station. A dispute spanning several years concerning Cadbury’s applications to register the color purple and Darrell Lea’s use of the color purple was resolved. (Cadbury Schweppes Pty Ltd v. Darrell Lea Chocolate Shops Pty Ltd (No. 8), [2008] FCA 470 (Apr. 11, 2008).) Mars was granted a registration for the color “Whiskas Purple.” (Mars Australia Pty Ltd (formerly Effem Foods Pty Ltd) v. Société des Produits Nestlé SA, [2010] FCA 639 (June 22, 2010).) Trademarks consisting of combinations of colors are likely to possess a greater degree of inherent distinctiveness than single colors. In Philmac Pty Ltd v. Registrar of Trade Marks, [2002] FCA 1551 (Dec. 13, 2002), Mr. Justice Mansfield, in considering the registrability of the color terracotta, set out some guidelines as to single-color marks that would be inherently adapted to distinguish: the colour does not serve a utilitarian function; the colour does not serve an ornamental function; the colour does not serve an economic function (i.e., it is not the naturally occurring colour of a product); and the colour is not sought to be registered in respect of goods in a market in which there is a proven competitive need for the use of colour. If color trademarks are found not to be inherently adapted to distinguish, evidence will have to be put forward to show that they have become distinctive through use in order to register them. As of May 31, 2012, 1,039 applications had been filed for color marks, of which 249 had been registered.

11 Shapes — United States The shape may be a three-dimensional representation of the product itself, the container for the product, or the architectural design of a store or signpost. It may be the shape of a label or tag and not simply the words or colors appearing thereon. Examples: The Coca-Cola bottle Apple’s iPod AT&T’s globe design

12 Shapes — EU Koninklijke Philips Electronics NV v. Remington Consumer Products Ltd (Case C-299/99 (ECJ June 16, 2002)): To be capable of distinguishing an article, “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.” “[S]igns consisting exclusively of the shape which results from the nature of the goods themselves, or the shape of goods which is necessary to obtain a technical result, or the shape which gives substantial value to the goods cannot be registered.” (See also Trade Marks Directive Art. 3.1(e).) There have been a large number of cases in the EU involving applications to register shapes as trademarks. There has been a reluctance to grant trademark protection to something more properly covered by patent or design rights. The main considerations with regard to the registrability of shape marks arise from Article 3.1 of the European Trade Marks Directive. Subparagraphs (c) and (e) are particularly relevant. “1. The following shall not be registered or if registered shall be liable to be declared invalid: signs which cannot constitute a trade mark; (b) trade marks which are devoid of any distinctive character; (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods; (d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade; (e) signs which consist exclusively of: the shape which results from the nature of the goods themselves, or the shape of goods which is necessary to obtain a technical result, or (iii) the shape which gives substantial value to the goods; (f) trade marks which are contrary to public policy or to accepted principles of morality; (g) trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service; (h) trade marks which have not been authorized by the competent authorities and are to be refused or invalidated pursuant to Article 6 ter of the Paris Convention for the Protection of Industrial Property, hereinafter referred to as the 'Paris Convention'.”

13 Shapes — EU — Examples Accepted Rejected
Philips three-headed rotary shaver Coca-Cola bottle Case law (Lego Juris A/S v. OHIM, Case C-48/09 (CJEU Sept. 14, 2010)) has indicated that marks are registrable where they contain another feature that means the mark does not consist “exclusively” of one of the features set out in Article 3.1(e) of the Trade Marks Directive. However, an objection under Articles 3.1(c) and 3.1(b) of the Directive might still apply if the shape merely denotes the goods to the relevant consumer (i.e., descriptiveness and nondistinctiveness objections, respectively). Coca-Cola bottle — Contradictory decisions were originally reached by OHIM examiners. Coca-Cola had filed three applications, of which two were accepted and the third was refused. The examiner of the rejected third application claimed that the ridges found on Coca-Cola bottles were not unique, as they were found on other bottles, and, further, that they performed a functional purpose, allowing the user to grip the bottle. It was held that it was relatively difficult to establish inherent distinctiveness of three-dimensional marks. On appeal, however, the OHIM Board of Appeal held that Coca-Cola’s bottle did look significantly different from other bottles on the market that had been highlighted. The shape departed from the norms and customs of the relevant sector, although whether it departed significantly was in doubt. Bang & Olufsen loudspeaker — The application was initially refused based on Article 7.1(b) of the CTM Regulation (marks devoid of distinctive character), the examiner finding that the shape consisted exclusively of a representation of a loudspeaker and was therefore devoid of distinctive character. The CFI annulled this decision, holding that the shape departed significantly from the customs of the sector and could therefore fulfill its function as a trademark. On returning to examination, the application was then rejected based on Article 7.1(e)(iii) of the Regulation (shape that gives substantial value to the goods), the examiner stating that such a sophisticated shape for a loudspeaker would give substantial value to the product. The applicant could not overcome this objection. Philips rotary shaver – Philips marketed a three-headed rotary shaver as shown; Remington started marketing a shaver with a similar head design. Philips sued for trademark infringement, and, in response, Remington claimed that Philips’ registration was invalid. The ECJ ruled that as Philips had been the only supplier of this particular type of shaver, extensive use might be sufficient to give the shape distinctive character, but that was for the national courts to decide. It seems that even if it can be shown that there are other shapes that can perform the same function, an application can still fall afoul of Article 3.1(e)(ii) of the Trade Marks Directive (shape of goods that is necessary to obtain a technical result) if the mark is designed to achieve and indeed does achieve a technical result. Dishwasher tablets — There are two cases, one involving Henkel and the other Procter & Gamble (P&G). Henkel’s dishwasher tablet was rectangular, while P&G’s was square. Both encompassed different layers and colors. The ECJ deemed the shapes not distinctive because they were commonplace shapes used for a product that was in common use. (Henkel KGaA v. OHIM, Joined Cases C-456/01 P and C-457/01 P (ECJ apr. 29, 2004); Procter & Gamble Co. v. OHIM, Joined Cases C-468/01 P – C-472/01 P (ECJ Apr. 29, 2004).) Unilever had a similar outcome with an oval tablet; the shape was not considered unusual. Indeed, the General Court held that the mark consisted of the appearance of the goods and that consumers would not associate the tablet with any trademark function. There was not enough evidence provided to prove that the shape had acquired distinctiveness and could serve to distinguish goods belonging to Unilever. (Unilever NV v. OHIM, Case T-194/01 (GC Mar. 5, 2003).) Bang & Olufsen loudspeaker Dishwasher tablet

14 Shapes — Japan In Japan, the percentage of trademarks accepted for registration (1996–present) is 70%–85%. The acceptance rate for three-dimensional trademarks is much lower (35%–55%); for three-dimensional trademarks without any characters, the rate falls further, to approximately 20%. Very few three-dimensional trademarks that consist solely of functional shapes (i.e., the container of the goods or industrially designed products) have been registered. 1997 Trademark Law enabled registration of three-dimensional marks. 4,782 applications and 1,929 registrations for three-dimensional marks (1997–Dec. 2010). Acquired distinctiveness is normally necessary. Example case: Coca-Cola bottle.

15 Shapes — Japan Inherently distinctive
- Distinctive without submitting any evidence of use of the trademark. Acquired distinctiveness - Trademarks that were initially rejected for lacking distinctiveness but were ultimately registered following sufficient evidence proving use of the trademark. The difference between “inherent distinctiveness” and “acquired distinctiveness” is that in the former case the mark is determined “distinctive” by the examiner without the applicant’s submitting any evidence of use of the trademark, while in the latter the mark is initially rejected by the examiner for lack of distinctiveness but subsequently accepted by the applicant’s proving acquired distinctiveness through use. After the Intellectual Property High Court’s decision regarding an application to register the drawing of a Mini Maglite® flashlight as a three-dimensional trademark (MAGLITE Instrument Inc. v. Commissioner of JPO, Case No (gyou-ke) (IP High Ct. June 27, 2007)), registration of three-dimensional marks became easier provided the applicant can prove acquired distinctiveness (e.g., Coca-Cola bottle, perfume bottle). In 2008, the IP High Court ruled that Coca-Cola’s contour bottle was distinctive, even without the COCA-COLA trademark displayed on it. The Court gave four main reasons for recognizing the distinctiveness of the contour bottle: (1) the bottle had been sold extensively in Japan; (2) it was used as a brand symbol in advertising in Japan; (3) surveys showed that consumers recognized the origin of the contour bottle without any logo; and (4) expert witnesses testified that the bottle was an example of a three-dimensional trademark. (Coca-Cola Co. v. Commissioner of JPO, Case No. Hei 18 (ne) (IP High Ct. May 29, 2008).) In a subsequent decision the IP High Court allowed Belgian chocolate maker Guylian to register one of its products as a three-dimensional trademark. In doing so, the Court adopted a more lenient standard. (Chocolaterie Guylian NV v. Commissioner of JPO, Case No. H-19 (gyo-ye) (IP High Ct. June 30, 2008).) Legislation to permit the registration of more nontraditional marks may soon be passed.

16 Designated goods/ services
Trademarks Designated goods/ services Summary & Analysis Class 30 Manju (Japanese confectionery) Rejected in 2006 The judge did not consider that this three-dimensional trademark was distinctive nor that it had acquired a secondary meaning. The decision was based on the fact that the mark merely indicates the shape of bird, which has traditionally been adopted as a shape for confectionery. Class 11 Mini searchlight Registered June 2007 The judge decided that the mark could be registered because it had obtained a secondary meaning based purely on its shape after long-term use. This is the leading case involving three-dimensional marks because the MINI MAGLITE trademark was the first mark deemed to have obtained a secondary meaning based entirely on its shape. This case set the precedent for the future. Formerly, under Japanese practice, three-dimensional trademarks consisting mainly of functional shapes, such as this trademark, had difficulty in securing registration. Class 32 Plastic bottles Registered May 2008 As in the previous cases, the judge decided that this trademark should be registered because it had obtained a secondary meaning. Coca-Cola enjoys a worldwide reputation and huge sales volumes. The amount of advertising submitted as evidence was a significant factor in the decision allowing the shape to proceed to registration, aided by a questionnaire from consumers.

17 Designated goods/ services
Trademarks Designated goods/ services Summary & Analysis Class 30 Registered in June 2008 The judge decided that this three-dimensional trademark of the shape of Guylian chocolate was inherently distinctive enough to be registered. Luxury items such as sweets or foods are more likely to be registered as three-dimensional trademarks than trademarks that consist mainly of functional shapes. Class 3 Bleaching preparations and other substances for laundry use and cleaning Registered in April 2011 This case involved a bottle of perfume resembling a naked female body. Although the judge didn’t consider that this three-dimensional trademark was distinctive, it was recognized that the mark had obtained a secondary meaning because it had been used for over 15 years. Additionally, its fanciful shape helped consumers recognize the trademark. Class 29 Lactic acid bacteria drinks Registered in November 2011 As with other cases, the judge decided that this three-dimensional trademark of a drink bottle should be registered because the mark had obtained a secondary meaning after long use.

18 Shapes — Australia Remington’s triple-headed shaver did not infringe Philips’ registration for the shape of a triple-headed shaver. (Koninklijke Philips Electronics NV v. Remington Products Australia Pty Ltd, [2000] FCA 876 (June 30, 2000).) The court concluded that Remington’s use of the triple-headed shaver did not amount to “use as a trade mark,” and therefore held that it did not infringe Philips’ registration for the shape of the triple-headed shaver. Kenman Kandy’s insect shape was held to be distinctive for confectionery goods. (Kenman Kandy Australia Pty Ltd v. Registrar of Trade Marks, [2002] FCAFC 273 (Aug. 28, 2002).) Registration of Guylian’s seahorse shape as a trademark was refused on the basis that it was not capable of distinguishing Guylian’s goods. (Chocolateire Guylian N.V. v. Registrar of Trade Marks, [2009] FCA 891 (Aug. 18, 2009).) In Gibson ([2010] ATMO 73 (Aug. 12, 2010), an application to register the shape of a house as a trademark was rejected. The delegate of the Registrar of Trade Marks was of the view that the evidence of use of the mark did not establish that the mark was inherently adapted to distinguish the designated goods from similar goods of other traders. In Australia the same test applies to shape marks as for any other kind of trademark – the mark must be capable of distinguishing the goods or services of one trader from those of other traders. Shape marks that are common to the trade or that exhibit functional characteristics are unlikely to be registrable prima facie, and evidence will have to be put forward to show that such shape marks have become distinctive through use. As of May 2012, 2,399 applications had been filed for shape trademarks, of which 744 marks had been registered.

19 Sounds — United States May be a jingle or any piece of music or other sound. It may be a short extract from a composition or an entire musical piece. In some cases, it may be a reproduction of an everyday sound, perhaps in an unusual circumstance. Examples: MGM Lion’s Roar NBC Chimes The AFLAC Duck Quacking MGM Lion’s Roar NBC Chimes In 1950, the National Broadcasting Company (NBC) registered its three-note chimes sequence as a service mark for broadcasting of radio programs in Class 38 (U.S. Reg. No , Apr. 4, 1950) (expired)). NBC obtained a similar registration in 1971 for broadcasting of TV programs (U.S. Reg. No , July 13, 1971). There are very few registered trademarks for sounds, under 100; probably the most famous is the roar of the MGM lion (U.S. Reg. No , June 3, 1986). The Harlem Globetrotters franchise holds a trademark registration for the melody “Sweet Georgia Brown,” for entertainment services (basketball exhibitions) in Class 41 ((U.S. Reg. No , July 14, 1992)), and American Family Life Insurance Company (AFLAC) registered the sound of the AFLAC duck quacking the company’s name for a variety of insurance underwriting services in Class 36 (U.S. Reg. No , Aug. 13, 2002). An application to register the “distinctive chug” of a Harley-Davidson motorcycle engine was withdrawn by Harley-Davidson after six years of litigation and oppositions to the registration by nine different competitors. Competitors argued that other motorcycles with V-twin engines produce the same sound. Index of registered sound marks:

20 Sounds — EU 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 (see below) . 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.… [T]hose 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.” Prior to the Shield Mark case, Nokia’s ring tone was registered as a CTM based on notes on a stave. (CTM No , filed Jan. 12, 1999, registered Oct. 30, 2000.) In 2005, OHIM said that electronic applications could include the sound file as an attachment. Since then, Tarzan’s yell has been registered based on a sonogram and an electronic copy of the sound. (CTM No , filed May 22, 2006, registered Mar. 4, 2008.) Although the CTM Regulation does not specifically mention sound marks, they were envisaged in the Joint Declarations of the Council and the Commission of the European Communities incorporated into the minutes of the Council when the Regulation was adopted. OHIM’s application form for CTMs provides a box to indicate a sound mark registration. OHIM had accepted sound marks when represented graphically by notes on a stave. The Shield Mark case involved numerous trademark registrations for the same sound—the first nine notes of Beethoven’s “Für Elise” and a cock crowing; the firm used the marks in advertising. The differences between the registrations included the way that the sound was represented: some provided the notes on a stave, while others merely listed the notes and still others provided only a description of the sound. The Court of Justice was asked essentially to define what can constitute graphical representation of a sound mark. The ECJ ruled: “1. Article 2 of [the Trade Marks] Directive … is to be interpreted as meaning that sound signs must be capable of being regarded as trade marks provided that they are capable of distinguishing the goods or services of one undertaking from those of other undertakings and are capable of being represented graphically. 2. Article 2 of [the] Directive … must be interpreted as meaning that a trade mark may 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 its representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. In the case of a sound sign, those requirements are not satisfied when the sign is represented graphically by means of a description using the written language, such as an indication that the sign consists of the notes going to make up a musical work, or the indication that it is the cry of an animal, or by means of a simple onomatopoeia, without more, or by means of a sequence of musical notes, without more. On the other hand, those requirements are satisfied where the sign 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.” Therefore, sound marks can satisfy the seven Sieckmann requirements even though not everyone can read music. Intelligibility does not have to be immediate. By a decision of the President in October 2005, OHIM provided that for electronic filings, “[w]here registration of a sound mark is applied for, one sound file containing the sound may be filed as an attachment to the electronic application form. The sound file shall be in the .mp3 format. Its file size shall not exceed one Megabyte. It shall not allow loops or streaming.” (Decision No. EX-05-3 of the President of the Office of 10 October 2005 concerning electronic filing of sound marks.) The OHIM Board of Appeal has indicated that sound spectrograms and sonograms that depict pitch, progression over time and volume may constitute an appropriate way of presenting sounds. There remain possible contentious issues regarding storage of the audio versions so they are always publically available and differing interpretations of sounds by individuals.

21 Sounds — Australia The first sound mark registered in Australia was the sound of the word “sproing,” intended to imitate the sound of a spring reverberating on metal, in respect of “floor coverings and underlay, including carpet underlay laminates incorporating rubber or rubber substitutes” in Class 27. (Reg. No , July 11, 1997.) The Trade Marks Office recently accepted an application for the sound of Tarzan’s yell for goods and services in Classes 28, 33 and 35. (Reg. No , Mar. 14, 2012.) The application was made by Edgar Rice Burroughs, Inc., the estate that owns the rights to Edgar Rice Burroughs’ Tarzan books. The same test applies to sound marks as for any other kind of trademark. The sound trademark must be capable of distinguishing the goods or services of one trader from those of another. Sounds that are “functional sounds” made by particular goods, and are therefore common to the trade, will not be inherently adapted to distinguish (e.g., the sound of a motorbike engine for goods of motorbikes). It is a requirement that trademarks be represented graphically (Trade Marks Act 1995 (Cth) Sec. 40); however, the Trade Marks Office will accept a precise description of the sound mark, such as musical notation. As of May 31, 2012, there had been 83 applications filed for sound trademarks, of which 39 marks had been registered.

22 Scents — United States Scents Applied to Products – Plumeria
Plumeria scent for sewing thread was registered in 1990. A written description of the scent, with or without a deposited sample, is acceptable in the United States. Scents Consisting of an Inherent Product Attribute “Functional” scents that are inherent in the product itself, such as the scent of a particular perfume, are not accepted for registration. Scents: In terms of the registration of trademarks, a scent mark is one of the most difficult to represent graphically. There is no requirement to submit a drawing with the application for either sound or scent marks. Instead, a detailed written description of the nonvisual mark must be provided. Registration requires “substantial” evidence of acquired distinctiveness. Many smells are associated with a particular manufacturer, however. In some cases, such as perfume houses, the particular scent is also the product itself. In other cases, it is a scent applied or added to the product, not the natural smell of the product itself. As of January 2011, there were two scent mark applications pending at the USPTO. Successful scent mark registrations are more common on the Supplemental Register than on the Principal Register.

23 Scents — EU Ralf Sieckmann v. Deutsches Patent- und Markenamt (Case C-273/00 (ECJ Dec. 12, 2002) Application for an olfactory mark for “methyl cinnamate.” Application included an annex with a chemical formula, directions on where to obtain a sample and a description of the scent as “balsamically fruity with a slight hint of cinnamon.” An odor sample in a container was also provided. The German Federal Patent Court had found that although theoretically a scent mark was capable of distinguishing the proprietor’s services from those of other traders, it was not capable of being represented graphically. The Court of Justice held that the requirements of graphic representability set out in Article 2 of the Trade Marks Directive are not satisfied where an odor is reproduced by a chemical formula, a description in written words, the deposit of an odor sample or a combination of these elements. Ralf Sieckmann, a patent and trademark attorney, applied for the trademark in Germany. Following extensive litigation, the European Court of Justice was asked whether trademarks, to be registrable, must be perceived visually and (if not) then whether certain specific means of representation are valid for reproducing an odor. While it provided a positive answer to the first question, the ECJ gave a negative one to the second: 1. Article 2 of [the Trade Marks] Directive … must be interpreted as meaning that a trade mark may 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 and objective. In respect of an olfactory sign, the requirements of graphic representation 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. Few people would recognise a chemical formula would relate to the odour in question and may instead relate it to the substance itself. The decision appears to have closed the door to smell marks in the EU, at least until someone tries a new way of representing a smell (perhaps relying on new technology). OHIM has therefore made it clear that smell marks are unlikely to be accepted (although it had previously accepted the smell of freshly cut grass for tennis balls - a mark that has since lapsed). It is difficult to envisage how a smell mark can meet the requirement for graphical representation, so registration is unlikely. Additionally, it is difficult to see how a registration could now survive an attack on validity. However, some EU member states have taken a more liberal view. For example, tires with “a floral fragrance/smell reminiscent of roses” (Reg. No , filed Oct. 31, 1994, and still registered) and darts with “the strong smell of bitter beer” (Reg. No , filed Oct. 31, 1994, and still registered) have both been registered in the United Kingdom. Sieckmann maintains a website with details of nontraditional marks in the EU and links to further resources:

24 Scents — Australia Registration No (May 20, 2008), in the name of E-Concierge Australia Pty Ltd, for a Eucalyptus Radiata scent in respect of golf tee goods. Pending Application No , for “lemon grass” in respect of health spa services in Class 44. Application No , for “the strong smell of beer,” in respect of darts in Class 28, was accepted, but ultimately the mark did not proceed to registration because the registration fees were not paid. As of May 31, 2012, ten applications had been filed for scent marks, of which one mark had been registered and one was pending. The same test applies to scent trademarks as for any other kind of trademark. The scent trademark must be capable of distinguishing the goods or services of one trader from those of another. Scents that are common to a particular trade/product will not be inherently adapted to distinguish. It is a requirement that trade marks be represented graphically (Trade Marks Act 1995 (Cth) Sec. 40); however, the Trade Marks Office will accept a precise verbal description of a scent as a “graphical representation” of the mark.

25 Motion Examples of motion trademarks include:
Kraft Foods UK Ltd., for chocolate and chocolate confectionary (UK Reg. No , Mar. 22, 2002): “The mark consists of the three dimensional shape breaking apart, as shown in the sequence of still pictures attached to the form of application.” GDS Video (hologram, CTM Reg. No , expired Mar. 6, 2011): “The letters VF in white on blue spheres, the name VIDEO FUTUR in blue on a black background.” The application also indicates the colors used. Lamborghini (refused as a CTM in 2001, later registered in the United States (U.S. Reg. No , Dec. 16, 2003): “The mark consists of the unique motion in which the door of a vehicle is opened.” More information from WIPO: United States: Motion marks that are nonfunctional and distinctive are registrable. The applicant must describe the motion mark as well as provide a drawing that either shows a single point in the movement or “up to five freeze frames showing various points in the movement, whichever best depicts the commercial impression of the mark.” 37 C.F.R. § 2.52(3). See TMEP § Examples of motion trademarks are: U.S. Reg. No , Feb. 29, 2000, for high-intensity searchlights (“The mark consists of a pre-programmed rotating sequence of a plurality of high intensity columns of light projected into the sky to locate a source at the base thereof”); U.S. Reg. No , Apr. 29, 2003, for hotel services (“The mark consists of the live visual and motion elements of The Peabody Duck March as performed at The Peabody Hotels”). Often, difficulty is encountered in providing a specimen that shows the entire mark. This is particularly difficult for a motion mark used in connection with goods because of the requirement that the specimen show the mark affixed to the goods.

26 Motion — Australia Motion trademarks (including moving images, holograms and gestures) are some of the more unusual marks that have been registered. The same principles apply: The motion trademark must be capable of distinguishing the goods or services of one trader from those of another. There must be clear graphical representation of all the features of the trademark and a description of the features. A copy of the motion trademark is required for examination. It is difficult to ascertain exactly how many motion trademarks exist, as there is no definitive way of searching for them. Examples include: Registration No (Aug. 28, 2000), for “a moving image showing a black bordered yellow coloured square with rounded corners. The letters Y, E, L, L appear individually and sequentially in the square. The representation on the application form shows the eight stills that make up the sequence.” Registration No (Sept. 7, 2006), for “an animated sequence involving two flared segments that join together as shown in the representations attached to the application. The sequence is of approximately one second's duration. During the sequence, a star-shaped geometric object moves up the outermost line of the first segment, across the apex where the two segments join, and down the innermost line of the second segment. The lines in each segment change colour as the geometric object moves. The two dimensional representations attached to the application form show the progression of the star-shaped object and are stills taken from the animated sequence.”—for operating system software in Class 9, owned by Microsoft Corporation.

27 Touch The feel of a product can be distinctive, but examples of tactile marks are rare. Exceptions are: UNDERBERG in Braille (German Reg. No , Mar. 12, 2003) American Wholesale Wine & Spirits, Inc.’s registration for “a velvet textured covering on the surface of a bottle of wine” (U.S. Reg. No , Oct. 17, 2006) It is possible for products to be manufactured in such a way that the good or their packaging have a particular sensation to the touch, which can distinguish them from those of competitors. Sometimes, a particular feel will reflect the quality of the product rather than the origin, but this type of mark may include, for example, tissues that are particularly soft or moist or products that may be held in the hand more comfortably. It is common practice for some products to have writing in Braille applied to them. Similarly registrable features may be added to products. United States: Touch (tactile) marks are registrable. The touch mark has to be represented graphically. An example of a touch mark is depicted in U.S. Registration No , for “a velvet textured covering on the surface of a bottle of wine” for wines in Class 33, registered in the name of American Wholesale Wine & Spirits, Inc. of Glenview, Illinois. While a touch mark may possibly be inherently distinctive, it is more likely that evidence of distinctiveness acquired through use will have to be provided before a touch mark is registrable as a trademark. The functionality doctrine may bar protection if the touch is essential to the use and purpose of the article or inherently affects its cost or quality.

28 Taste Taste trademarks have been hard to protect, as trademark offices have argued that taste does not act in a trademark sense. Organon’s attempt to register the taste of orange for pharmaceuticals was rejected in the United States. Eli Lilly’s application to register the taste of artificial strawberry flavor as a Community trade mark was rejected by the OHIM examiner, whose decision was upheld by the Board of Appeal. In the EU, a taste mark is examined in the same way as all other marks, so it must be capable of graphical representation (i.e., meet the criteria set out in the Sieckmann scent case). In many cases it will be difficult to distinguish between the natural flavor of a product and the recipe adopted by a manufacturer to distinguish its goods from those of competitors. The flavor of cola drinks is a good example. The manufacturers of such goods would certainly consider the flavor of their products as being a trademark of the company, and the recipes often are closely guarded trade secrets. Taste is very subjective, and therefore it would be extremely difficult to define and compare one taste with another. United States: Technically, taste (or flavor) marks are capable of registration. An application to register a flavor “requires a substantial showing of acquired distinctiveness.” (In re N.V. Organon, 79 U.S.P.Q.2d 1639, 1650 (T.T.A.B. 2006).) To date there are no registrations for taste or flavor. The TTAB has observed that “it is unclear how a flavor could function as a source indicator because flavor or taste generally performs a utilitarian function and consumers generally have no access to a product’s flavor or taste prior to purchase.” Id. at See TMEP § The requirement for a drawing does not apply when a mark consists of completely nonvisual matter. The applicant must submit a detailed description of the mark. 37 C.F.R. § 2.52(e). See TMEP § EU: Eli Lilly and Co., appeal relating to Community Trade Mark Application No , Case R 120/ (OHIM Second Board of Appeal Aug. 4, 2003).

29 Touch and Taste — Australia
“Texture” and “taste” both fall under the definition of a “sign.” A trademark is a sign, and so, in theory, it is possible to apply to register such trademarks in Australia. It appears that no such marks have been registered in Australia. The same principles apply for registrability: The “texture” or “taste” mark must be capable of distinguishing the goods or services of one trader from those of another. There must be a clear description of the trademark and/or a visual representation of it. The examiner’s manual states: “While ‘taste’ arguably falls within the definition of a sign, it is difficult to determine how a taste or flavour could serve to distinguish an applicant’s goods. It may often not be practical (or hygienic) for a customer to taste goods prior to selection and purchase. Tasting the goods after purchase does not seem to meet the requirements of denoting a trade source.” Trade Marks Office Manual of Practice and Procedure Part


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