The Registrability Of Non-traditional Trademarks In The UK And EU

Introduction

Conventionally, the Trademark Act 1994 (TMA) defines trademark as ‘any sign capable of being presented graphically to distinguish goods and services’. A trademark acts as an “indicator of origin” where businesses seek registration to protect identifying features and instil consumer confidence.

To be registered, Sec 5 TMA states it marks must be non-generic, descriptive, subsequent use and distinctiveness without going against public policy and morality. Sieckmann’s criteria imposes additional requirements of graphical representation, clarity, precision, self-containable, objective, accessibility, intelligibility and durability. The rigidity to satisfy the requirements considered problematic.

EU Trademark Directive 2015 (EUTMR) brought novelties aiming to improve legal certainty and flexibility to trademark registry and new entries for trademark representation. This paper critically analyses the registrability of various non-traditional trademarks (NTTM) in the UK and EU, assessing successfulness of post-reform approaches. This paper goes on to consider new areas of trademarks and recommendations following technological advancements.

Consequences post-reform

NNTMs are broad category of unconventional marks that witnessed a steady growth resulting from technological advancements and expansion of the jurisprudence of trademark protection. As of 19th April 2020, a register search provided applications for 17550 3D-marks, 1952 colour marks, 356 sound marks and 14 olfactory marks.

A trademark is graphically represented if it is capable of being perceived visually through indirect means. The removal of graphical representation criteria under EUTMR is considered questionable and promising for trademark holders. The consequences of the following NTTMs post-reform is analysed.

Sound, Motion and Multimedia Marks

Sound marks are unusual marks existing in non-visual form. Previously, sounds marks could be represented through musical notations or spectrograms combined with a sound file. However, graphical representation not easily fulfilled as a sound file only provides the description and replication of the sound. In most cases, an onomatopoeia would fail the exactness of the criteria. In the decision for the registering of the iconic “Tarzan yell”, OHIM rejected the application on grounds that no strong evidence demonstrating the exact description of words that constitutes a representation.

Among the amendments, EUTMR provided additional eligible sounds to the list of marks to be registered. Motion marks under Art 3(3)(h) EUTMR consists of “movements or a change in the position of the elements of the mark” that grants an option for description and submission of a video file containing still sequential images displaying the movement. Art.3(3)(I) EUTMR provides multimedia marks which are the “combination of image and sound” registered by submitting an audio-visual file containing the combination of both.

Art.4(b) EUTMR includes the representation of sound marks through sound files using generally available technology. It is submitted that it is harder to fulfil the intelligibility criteria for musical notation amongst general public. A sound file however replicates the exact characteristic of making it easier way for authorities, competitors and consumers to identify and distinguish marks from other undertakings.

This improves legal certainty as individuals can efficiently regulate the sound mark protection and act accordingly. Flexibility increases as individuals can now opt for representation through the electronic recording of the sound itself as it is the most common and familiar amongst public.

However, it is argued that sound files should be complemented with musical notations to fulfil Sieckmann criteria. Comparing two sound samples side-by-side could cause confusion, missed sound distinctions and observance of small measures of imprecision. Human error may grasp sounds inaccurately either by omitting or adding sound nuances or frequencies in question.

Upon graphical representation removal, sound marks may require a visual element requiring a higher level of legal certainty. Hence, an observation of precision and exactness will be a question of technological solutions and reasonings of the legislators and authorities behind such a decision.

Currently, the European Intellectual Property Office had 267 applications for EU sound marks and only 26 of them were refused. Many problems of onomatopoeias representation existing earlier are solved. EUTMR recognizes registration of new sound marks and improved success rate for registrability of existing ones.

Colour Mark

Pre-reform, marks consisting of only one colour in question can be registered through the representation of a visual sample and a verbal description. Art 3(3)(f) EUTMR provides the representation of a single or combination of colour to be a reproduction of that colour in an indicated manner through a reference to a recognized colour code with an option for description.

In Cadbury v Comptroller, the representation of colour combinations are to be “arranged systematically … in a predetermined and uniform method”. The combination of ‘blue and silver’ representation in the Red Bull joint case, viewed a systematic arrangement for customers to purchase with certainty. Considering Iegal certainty, CJEU in Oy Hartwall held the requirement for clarification and specification if the contours consists of a subject matter. However, the strict requirement is not justified to supplement or derogate from distinctiveness. In Heidelberger, courts held steps for registrability include signs capable of being distinguished. The ECJ in Libertel required colours to be supported by proof to satisfy distinctiveness. Libertel held the public perception is similar to a word or figurative mark, as a colour is usually undistinguishable between goods and services but may obtain use that is made of in the market.

It is submitted that registrability should include usage of recognized colour codes for accuracy and legal certainty. Flexibility would not improve representation in any significance, as no new substitutions has developed following the reform in EUTMR. Therefore, it is not of necessity to represent colour marks in a different way as the previous way fulfils the Sieckmann criteria and no inherent changes observed upon the removal of the graphical representation.

Shape Mark

Shape marks extend to a three-dimensional (3D) shapes including the product itself, containers and packaging. Previously, 3D marks could be registered by submitting a minimum of six illustrations from different angles of the object. In Philips, Lehane J held no infringement of shape based on similarity of three-headed shaver, as no indication of trade origin of functional feature. In relation to this, CJEU, in the application of Simba Toys, held the need for essential characteristics so that trademark holders do not appropriate a mark constituting a technical solution protecting public interest. Although Nestlé’s Polomint shape was distinctive to all, the application failed on technicalities illustrating the difficulty of shape mark registration.

Art 4 EUTMR provides for 3D-shapes presented through three dimensions in an interactive, electronic 3D-model viewer, a form of generally available technology. Trademark holders can observe multiple angles through this interface fulfilling precision and clarity.

In Henkel v OHIM, the term “extending to” extends to words or figurative elements for the appearance, intelligible for public perception. Lord Oliver in Interlego held that trademark protection requires an element of distinctiveness of “visually significant” to constitute an original work. Fulfilment of accessibility is harder as representation is only accessed through a specific utility on the EUIPO website. However, flexibility is observed where EUTMR allows for three valid representation for 3D marks, including the previous method of a physical format, depending on an individual’s preference.

Art.7(1) EUTMR includes “shapes or another characteristic”, resulting from the nature of objects, replacing the graphical representation. It is argued that this provision should be analogously extended to any characteristic of an object under this provision to prevent the extension of an intellectual property right for an indefinite period. It is submitted that the 3D-model view under EUTMR is an improvement to the previous lesser precise method.

Scent Mark

McEarchen writes that scent linked to the limbic system which controls memories and emotions, could influence customer’s purchasing habits as they are the most reliable memory. Remington states scents are signs that can transmit information. Sieckmann held representation of chemical formula, the description, and a sample not fulfil requirements. Eden SARL, providing ripe smell of strawberries failed this requirement. Legal academicians argued immense obstacle to the success of trademark registration of scent.

No specific exclusion under EUIPO of scent mark registration, providing fulfils Sieckmann criteria. EUTMR aims to observe legal certainty and public order to protect the transparency of registration. The requirement of an “appropriate form” is troublesome. It is argued that scent representation can be solely done through the screen transmitting technology as universal scent can be differentiated without complementary representations. However this compromises legal certainty. Identification of scent deviates with familiarity, perception and combination of multiple scents.

Currently, scent mark would fail Sieckmann criteria despite graphic representation removal. Having a narrow range of perception, Maniatis viewed scent having direct connection to goods and services in question. The subjectivity of a verbal description is harder to be visually perceptible to an objective test as individuals have varying sensory perception. Chemical formula and chromatogram is not precise and not intelligible to public. This representation fails the durability test as time could degrade its contents.

As for distinctiveness, it is argued that it could be fulfilled if a scent of a particular type of object is consistently used to all materials to this unusual smell. The current application for the Hasbro 2017 relies on this argument. Senta Aromatic considered consumer’s viewpoint as ‘freshly cut grass’ as widely recognized for representation.

Hence, courts should take a purposive approach to EUTMR to interpret Sieckmann’s rigid criteria to include registration of scent marks to include combination of description, chemical formula and smell sample. It should be the case that so long as authorities and individuals can decipher the trademarked object, irrespective of how representation takes place, legal certainty and flexibility is observed.

Although EUTMR shines light to the representation of scent, it is submitted a lack of precise rules for determining sample composition. The AG in Sieckmann opined scent marks representation is currently unsuccessful due to the impossibility in categorizing smells according to a logical system. This leaves limited opportunity of technological advancement to register non-visual NTTM. This poses a challenge to the modern fragrance industry and lawmakers should consider a more flexible approach.

Recommendations

To accommodate modernized society, courts consider technological advancements and revaluate the strict criteria in Sieckmann regarding representation and protection of non-visual marks.

A better alternative for sound mark representation is through an electronic file capable of auditory and visual elements containing an accurate replication of the sound. A spectrogram that visualizes waveforms displaying the frequency, tone and intensity changes over the period of sound gives a more detailed character of sound compared to a human ear. This generally available technology is used when recording audio samples attaining a higher degree of precision and clarity. Providing a visualization medium, individuals are able to analyse sound files better when comparing two similar sounds.

A better alternative for colour mark representation is improving the recognized colour code system. Increasing the importance provides individuals higher likelihood of registering marks. Authorities perform examinations of representation with precision and exactness. A verbal description may not likely be similar to the exact nuances of a colour. It is submitted that without recognized colour codes, only vague differences can be observed.

It is submitted a dire need for scent representation as currently the only source for protection is secrecy and patented process. Technology in relation to precise representation of scents and trademark law continuously progresses. Utilizing smell transmitting technology with completing types of representations is recommended. Proposed methods are gas chromatography, smelling screens and development of odour classification system. Upon technological development, issues of durability and accessibility would be obsolete as smell transmitters made available in screens of televisions and smartphones. At the current rate of technological advancement, such transmitting technology is within a foreseeable future.

Artificial Intelligence

Validity of the traditional trademark law is questioned in consideration of Artificial Intelligence’s (AI) rapid development of reducing human involvement in product suggestion and purchasing processes. In Lush v Amazon the courts held infringement of Lush trademarks where when the word ‘lush’ is searched, instead of a Lush product the AI of the website suggest other similar products. Although an effective tool for corporate and social communication, a cause of concern of AI based e-commerce platforms to monopolize brands. Courts should asses AI related issues like average consumer, source of identification and likelihood of confusion.

Although AI poses challenges to trademark law, it could introduce a future possibility for protection of touch marks with the inventions of virtual reality domain. Technological developments holds a lot of promises for representation and improvement for authority to determine registration in the Trademark register.

Conclusion

EUTMR’s aim to widen scope for trademark registration has been successful in some marks, yet calls for more amendments in the law for other marks. It is argued that strict requirements under EUTMR remain an obstacle for individuals seeking to protect NTTM. Consequently, EUTMR manages to strike a balance between protecting marks to reflect modern commercial reality and protecting individual’s right from being disproportionally disadvantaged by an absolute autonomy. EUTMR’s reforms serves a good step forward for trademarks to adapt to further technological advancements.