Non-conventional trademark
Encyclopedia
A non-conventional trademark, also known as a nontraditional trademark, is any new type of trademark
which does not belong to a pre-existing, convention
al category of trade mark, and which is often difficult to register, but which may nevertheless fulfill the essential trademark function of uniquely identifying the commercial origin of products or services.
The term is broadly inclusive as it encompasses marks which do not fall into the conventional set of marks (eg. 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, smell, taste and texture.
Non-conventional trademarks may therefore be visible signs
(eg. colors, shapes, moving images, holograms, positions), or non-visible signs (eg. sounds, scents, tastes, textures).
, such as the Agreement on Trade-Related Aspects of Intellectual Property Rights
, which sets down a standardised, inclusive legal definition. Single colour trademark
s, motion trademarks, hologram trademark
s, shape trademarks (also known as three dimensional trademarks or 3D trademarks), and sound trademark
s (also known as aural trademarks), are examples of such marks.
In the United Kingdom
, colours have been granted trademark protection when used in specific, limited contexts such as packaging or marketing. The particular shade of turquoise used on cans of Heinz
baked beans
can only be used by the H. J. Heinz Company
for that product. In another instance, BP claims the right to use green on signs for petrol stations.http://news.bbc.co.uk/2/hi/uk_news/magazine/3555398.stm In a widely disputed move, Cadbury's (confectioners) has been granted "the colour Purple".
In the United States, it is possible, in some cases, for color alone to function as a trademark. Originally, color was considered not a valid feature to register a trademark Leshen & Sons Rope Co. v. Broderick & Bascom Rope Co., 201 U.S. 166 (1906). Later, with the passage of the Lanham Act
the United States Supreme Court in the case of Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 165, 115 S.Ct. 1300, 1304, 131 L.Ed.2d 248 (1995) would rule that under the Lanham Act, subject to the usual conditions, a color is registrable as a trademark.
The right to exclusive use of a specific color as a trademark on packaging has generally been mixed in U.S. court cases. 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. 1041 (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.), cert. denied, 115 S. Ct. 1426 (1994)); and the use of red for one half of a soup can (Campbell Soup Co. v. Armour & Co., 175 F. 2d 795 (Court of App. 3d Cir., 1949)). A successful case granting color protection involved 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 of an "ugly shade of greenish-gold" for dry cleaning pads (Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 165, 115 S.Ct. 1300, 1304, 131 L.Ed.2d 248 (1995)).
Although scent trademarks (also known as olfactory trademarks or smell trademarks), are sometimes specifically mentioned in legislative definitions of "trademark", it is often difficult to register such marks if consistent, non-arbitrary and meaningful graphic representations of the marks cannot be produced. This tends to be an issue with all types of non-conventional trademarks, especially in Europe. United States practice is generally more liberal; a trademark for plumeria scent for sewing thread was registered in 1990. In Europe, a written description, with or without a deposited sample, is not sufficient to allow the mark to be registered, whereas such formalities are acceptable in the United States. However, even in the United States "functional" scents that are inherent in the product itself, such as smell for perfume, are not accepted for registration.
One example of a shape trademark recognized in Europe is the protection granted to Toblerone
, a company which manufactures chocolate bars with a distinctive triangular shape.http://news.bbc.co.uk/2/hi/uk_news/magazine/3555398.stm
Presenting further difficulties are entirely new types of marks which, despite growing commercial adoption in the marketplace
, are typically very difficult to register, often because they are not formally recognised as a "trademark". Examples of such marks are motion trademarks (also known as animated marks, moving marks, moving image marks or movement marks). Many web browser
s feature a moving image mark in the top right hand corner of the browser screen which is visible when the browser is in the process of resolving a website
.
batting insulation product. The decision was based upon the fact that the company had been emphasizing the pink color of its insulation for decades, had licensed use of the Pink Panther cartoon character in its ads, the color was a non-functional aspect of the product (fiberglass is normally tan or yellow, unlike, say, antifreeze
which normally is a shade of green), and Owens Corning had spent over US$50 million advertising its insulation product. In re Owens-Corning Fiberglas Corp.,, 774 F.2d 1116 (Fed. Cir. 1985)
(case C-273/00), a judgement of the European Court of Justice
issued on December 12, 2002, the ECJ held in relation to trademarks in the European Community that:
Trademark
A trademark, trade mark, or trade-mark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or...
which does not belong to a pre-existing, convention
Convention (norm)
A convention is a set of agreed, stipulated or generally accepted standards, norms, social norms or criteria, often taking the form of a custom....
al category of trade mark, and which is often difficult to register, but which may nevertheless fulfill the essential trademark function of uniquely identifying the commercial origin of products or services.
The term is broadly inclusive as it encompasses marks which do not fall into the conventional set of marks (eg. 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, smell, taste and texture.
Non-conventional trademarks may therefore be visible signs
Sign (semiotics)
A sign is understood as a discrete unit of meaning in semiotics. It is defined as "something that stands for something, to someone in some capacity" It includes words, images, gestures, scents, tastes, textures, sounds – essentially all of the ways in which information can be...
(eg. colors, shapes, moving images, holograms, positions), or non-visible signs (eg. sounds, scents, tastes, textures).
Trends and issues
Certain types of non-conventional trademarks have become more widely accepted in recent times as a result of legislative changes which expand the definition of 'trademark'. Such developments are the result of international treaties dealing with intellectual propertyIntellectual property
Intellectual property is a term referring to a number of distinct types of creations of the mind for which a set of exclusive rights are recognized—and the corresponding fields of law...
, such as the Agreement on Trade-Related Aspects of Intellectual Property Rights
Agreement on Trade-Related Aspects of Intellectual Property Rights
The Agreement on Trade Related Aspects of Intellectual Property Rights is an international agreement administered by the World Trade Organization that sets down minimum standards for many forms of intellectual property regulation as applied to nationals of other WTO Members...
, which sets down a standardised, inclusive legal definition. Single colour trademark
Colour trademark
A colour trademark is a non-conventional trademark where at least one colour is used to perform the trademark function of uniquely identifying the commercial origin of products or services....
s, motion trademarks, hologram trademark
Hologram trademark
A hologram trademark is a non-conventional trademark where a hologram is used to perform the trademark function of uniquely identifying the commercial origin of products or services....
s, shape trademarks (also known as three dimensional trademarks or 3D trademarks), and sound trademark
Sound trademark
A sound trademark is a non-conventional trademark where sound is used to perform the trademark function of uniquely identifying the commercial origin of products or services....
s (also known as aural trademarks), are examples of such marks.
In the United Kingdom
United Kingdom
The United Kingdom of Great Britain and Northern IrelandIn the United Kingdom and Dependencies, other languages have been officially recognised as legitimate autochthonous languages under the European Charter for Regional or Minority Languages...
, colours have been granted trademark protection when used in specific, limited contexts such as packaging or marketing. The particular shade of turquoise used on cans of Heinz
H. J. Heinz Company
The H. J. Heinz Company , commonly known as Heinz and famous for its "57 Varieties" slogan and its ketchup, is an American food company with world headquarters in Pittsburgh, Pennsylvania.Perhaps best known for its ketchup, the H.J...
baked beans
Baked beans
Baked beans is a dish containing beans, sometimes baked but, despite the name, usually stewed, in a sauce. Most commercial canned baked beans are made from haricot beans, also known as navy beans – a variety of Phaseolus vulgaris – in a sauce. In Ireland and the United Kingdom, a tomato...
can only be used by the H. J. Heinz Company
H. J. Heinz Company
The H. J. Heinz Company , commonly known as Heinz and famous for its "57 Varieties" slogan and its ketchup, is an American food company with world headquarters in Pittsburgh, Pennsylvania.Perhaps best known for its ketchup, the H.J...
for that product. In another instance, BP claims the right to use green on signs for petrol stations.http://news.bbc.co.uk/2/hi/uk_news/magazine/3555398.stm In a widely disputed move, Cadbury's (confectioners) has been granted "the colour Purple".
In the United States, it is possible, in some cases, for color alone to function as a trademark. Originally, color was considered not a valid feature to register a trademark Leshen & Sons Rope Co. v. Broderick & Bascom Rope Co., 201 U.S. 166 (1906). Later, with the passage of the Lanham Act
Lanham Act
The Lanham Act is a piece of legislation that contains the federal statutes of trademark law in the United States. The Act prohibits a number of activities, including trademark infringement, trademark dilution, and false advertising.-History:Named for Representative Fritz G...
the United States Supreme Court in the case of Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 165, 115 S.Ct. 1300, 1304, 131 L.Ed.2d 248 (1995) would rule that under the Lanham Act, subject to the usual conditions, a color is registrable as a trademark.
The right to exclusive use of a specific color as a trademark on packaging has generally been mixed in U.S. court cases. 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. 1041 (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.), cert. denied, 115 S. Ct. 1426 (1994)); and the use of red for one half of a soup can (Campbell Soup Co. v. Armour & Co., 175 F. 2d 795 (Court of App. 3d Cir., 1949)). A successful case granting color protection involved 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 of an "ugly shade of greenish-gold" for dry cleaning pads (Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 165, 115 S.Ct. 1300, 1304, 131 L.Ed.2d 248 (1995)).
Although scent trademarks (also known as olfactory trademarks or smell trademarks), are sometimes specifically mentioned in legislative definitions of "trademark", it is often difficult to register such marks if consistent, non-arbitrary and meaningful graphic representations of the marks cannot be produced. This tends to be an issue with all types of non-conventional trademarks, especially in Europe. United States practice is generally more liberal; a trademark for plumeria scent for sewing thread was registered in 1990. In Europe, a written description, with or without a deposited sample, is not sufficient to allow the mark to be registered, whereas such formalities are acceptable in the United States. However, even in the United States "functional" scents that are inherent in the product itself, such as smell for perfume, are not accepted for registration.
One example of a shape trademark recognized in Europe is the protection granted to Toblerone
Toblerone
Toblerone is a chocolate bar brand owned by Kraft Foods, who acquired the product from former owner Jacobs Suchard in 1990. It is well-known for its distinctive packaging, its prism shape and its ubiquity in duty-free shops.The triangular shape of the Matterhorn in the Swiss Alps is commonly...
, a company which manufactures chocolate bars with a distinctive triangular shape.http://news.bbc.co.uk/2/hi/uk_news/magazine/3555398.stm
Presenting further difficulties are entirely new types of marks which, despite growing commercial adoption in the marketplace
Marketplace
A marketplace is the space, actual, virtual or metaphorical, in which a market operates. The term is also used in a trademark law context to denote the actual consumer environment, ie. the 'real world' in which products and services are provided and consumed.-Marketplaces and street markets:A...
, are typically very difficult to register, often because they are not formally recognised as a "trademark". Examples of such marks are motion trademarks (also known as animated marks, moving marks, moving image marks or movement marks). Many web browser
Web browser
A web browser is a software application for retrieving, presenting, and traversing information resources on the World Wide Web. An information resource is identified by a Uniform Resource Identifier and may be a web page, image, video, or other piece of content...
s feature a moving image mark in the top right hand corner of the browser screen which is visible when the browser is in the process of resolving a website
Website
A website, also written as Web site, web site, or simply site, is a collection of related web pages containing images, videos or other digital assets. A website is hosted on at least one web server, accessible via a network such as the Internet or a private local area network through an Internet...
.
Owens-Corning
Owens-Corning was issued a trademark for the color pink used to color its fiberglassFiberglass
Glass fiber is a material consisting of numerous extremely fine fibers of glass.Glassmakers throughout history have experimented with glass fibers, but mass manufacture of glass fiber was only made possible with the invention of finer machine tooling...
batting insulation product. The decision was based upon the fact that the company had been emphasizing the pink color of its insulation for decades, had licensed use of the Pink Panther cartoon character in its ads, the color was a non-functional aspect of the product (fiberglass is normally tan or yellow, unlike, say, antifreeze
Antifreeze
Antifreeze is a freeze preventive used in internal combustion engines and other heat transfer applications, such as HVAC chillers and solar water heaters....
which normally is a shade of green), and Owens Corning had spent over US$50 million advertising its insulation product. In re Owens-Corning Fiberglas Corp.,, 774 F.2d 1116 (Fed. Cir. 1985)
Sieckmann
In Dr. Ralf Sieckmann vs Deutsches Patent- und MarkenamtRalf Sieckmann v Deutsches Patent und Markenamt
In trademark law, Sieckmann v German Patent Office issued on December 12, 2002, is widely recognised as a landmark decision of the European Court of Justice on the graphical representation of non-conventional trademarks under the European Trade Marks Directive.The case involved a "methyl...
(case C-273/00), a judgement of the European Court of Justice
European Court of Justice
The Court can sit in plenary session, as a Grand Chamber of 13 judges, or in chambers of three or five judges. Plenary sitting are now very rare, and the court mostly sits in chambers of three or five judges...
issued on December 12, 2002, the ECJ held in relation to trademarks in the European Community that:
- Article 2 of Council Directive 89/104/EEC (of 21 December 1988 to approximate the laws of the Member States relating to trade marks) 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 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.
External links
- INTA website on nontraditional trademarks — according to INTA, non-conventional trademarks may be categorised according to appearance, shape, sound, smell, taste and texture
- Welcome to the non-traditional Trade Mark Archives — the non-traditional trade marks archives of Ralf Sieckmann include a data base of trade marks in the field of sound, smell, taste, texture, motion, holograms worldwide. The 2007 version of the archives is available here http://www.brainguide.com/dr-ralf-sieckmann/persondetail,1,,,,,37597.html
- The fresh version of Non-Traditional Trade Mark Archives under publications
- A discussion on shapes as trademarks in India