The registration of unusual trade marks

The registration of unusual trade marks

With intellectual property law being such a fluid subject, the possibilities for trade mark registration are endless.

However, of course, there are parameters in which a mark has to stay in to have the ability to be registered.

Under section 1 of Trade Mark Act 1994, for a trade mark to be registered it needs to be capable of graphic representation as well as the ability to be distinguish in goods and services.

It is clear the requirement for the mark to be graphically represented can create a challenge for a party wanting to register an unusual mark such as a smell, three-dimensional shape or colour.

Where the statute does not give any more guidance, rulings in cases such as Sieckmann v Duetsches Patent- und Markenamt (C-273/00) give more clarity to these unanswered questions.

In this case, a preliminary ruling was given by the Court of Justice for the European Union (CJEU) in relation to whether a smell can be represented graphically by providing a description, a written-out chemical formula or an actual sample of the smell.

The CJEU stated that for a mark to be graphically represented it firstly needed to consist of images, lines or characters and additionally marks needed to be ‘ clear, precise, self-contained, easily accessible, intelligible, durable and objective’.

In light of this, the CJEU stated that firstly a description was not precise or clear, secondly a chemical formula of the smell is not easily accessible or objective and thirdly, an actual sample of the smell would not be durable or objective.

This may seem that trade mark protection of smells is out of the question but the court did state that they are willing to rule on any other alternatives as long as they satisfy the criteria.

In addition, Libertel Groep BV v Benelux-Merkenbureau (C-104/01) confirmed the position of the registration of colours. The CJEU again gave a preliminary ruling and stated that a colour could not represented graphically with just a sample as this was not sufficiently precise or durable. However with the addition of a description or recognized colour identification code, it would be graphically represented. The court also stated that there is difficulty in a colour becoming distinctive unless consumers became familiar with it over time. The court did highlight that if there is a likelihood of a monopoly developing over a specific colour, the application will be refused.

Therefore to conclude, it is clear that trade marks that go against the grain and do not conform to traditional rules may experience problems when registering.

By Ellis Sweetenham