Trademark

Non-Traditional Trade Marks – What Can Be Registered?

A trademark is a powerful tool, figures suggest in the case of Google for instance, their trademark is estimated at $44billion, equating to 27% of the firm’s overall value. Considering these figures, it is no wonder that companies are pushing the boundaries by attempting to move away from traditional trademarks of words and logos, and instead moving to “non-traditional trademarks” such as smell, colours, holograms and even the layout of shops in the case of apple.

The legal definition of a trade mark can be seen as “capable of being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”. This suggests that as long as something can be entered into the registered, therefore words, logos, and even songs via mp3 files may be registered as a trade mark. Indeed, many famous sounds you may be familiar with have been trade marked, for instance many would be familiar with the “Nokia Jingle” which is a registered trade mark.

 

A company may try and obtain a trademark using colour. In Libertel, the colour orange was tried to be filed, along with the words Orange placed in capitals in the box. The court held that this could be allowed, however would have to use an internationally recognised colour chart, thus failed due to lack of precision.  The decision may have been a public policy decision due to the Dutch national colour being orange where the trademark had been filed.  According to Heidelberger Bauchemie, registering a combination of colours for a trademark is a more effective way to register, as long as the combination must be arranged systematically in a predetermined and uniform way. Milka has successfully managed to trademark its specific colour for its confectionary, showing it is possible to register a colour as long as it is distinctive.

Although a high threshold, smells may be trade marked. In sickemann, the trademark a trade mark application was made but rejected even though the applicant had written down the chemical formula as well as the full written name of “pure methyl cinnamate”, described the smell as “fruity with a slight hint of cinnamon” and also supplied a sample. In a further case to try and satisfy the criterion, (Eden v OHIM), a strawberry was illustrated in addition to try to gain an the trademark. However, this was held to fail as the smell of a ripe strawberry may vary from person to person. Chanel’s attempt to register its famous perfume “No.5” as an olfactory mark failed due to their entire product being the smell, which would create a monopoly. This shows within the EU, there is a very high threshold to get a smell mark registered, with only one successful case to date.Worldwide the likelihood of gaining a smell mark is also small. In Australia only one has been granted and in the UK registrations for tires with “a floral fragrance/smell reminiscent of roses” and darts with “the strong smell of bitter beer” have been applied. The US has to date ten registered, such as “Flowery Musk Scent” in Verizon stores.

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