When thinking about trademarks, it is probably brand names and logos which are called to mind and most readily associated with this type of intellectual property. The reach of trademark protection, however, is in fact far broader than these types of marks and extends to the less traditional world of colours (see our post about Louboutin’s red-soled shoe saga), sounds, smells and even motion, hologram and multimedia marks. This post explores the nature of these more unusual marks and the changing legal landscape in this area.
Doing away with the graphical representation requirement
Traditionally, one of the fundamental requirements for a trademark has been the requirement for the sign to be capable of ‘graphical representation’. This requirement was removed from the registrability criteria for EU trademarks in October 2017, leading to increased flexibility in the type of marks that could be registered in that territory. Provided the representation of the mark is sufficiently clear, precise, self-contained, easily accessible, intelligible, durable and objective, in principle it can be the subject of an application. Unsurprisingly, this led to a rise in applications for some of the less conventional marks mentioned above.
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As of 14 January 2019, new trademark laws have come into force in the UK which implement this more relaxed criteria, again expanding the definition of a trademark by removing the graphical representation criteria and opening up the possibility of protecting a greater number of less tangible marks in the UK.
This new law will enable any trademark to be registered if it is represented in any appropriate form using generally available technology (e.g. MP3 or MP4 format), if it is capable of distinguishing goods or services of one undertaking from those of another, and provided the public can determine the clear and precise subject matter of the protection afforded. As a result, the hurdle for protecting things like sound, smell and multimedia marks (which can be inherently tricky to represent graphically) will soon be lower than before.
But is the mark sufficiently distinctive?
In March 2017, a Turkish chef known as Salt Bae filed a colour motion mark representing a 3-second cinematic sequence showing the movements made by a chef while sprinkling salt on a piece of meat. Whilst the application was partly successful in relation to some of the goods/services (including clothing and accommodation), it was also refused in part on the basis that it was found to be devoid of any distinctive character in respect of the food and catering-related services for which it sought protection.
The court commented that the mark “will be seen by the relevant public as nothing more than a banal and ordinary scene of a chef preparing meat with a pinch of salt”. This was deemed to be a very normal and standard practice within the world of cooking, with nothing “fanciful, imaginative or striking in the motion mark”. The applicant was unable to overcome this refusal by showing that the mark had established ‘acquired distinctiveness’.
This case demonstrates that, although these more unusual marks may in theory be protectable, they will still need to be sufficiently distinctive in order to be associated with the owner and therefore fulfill the function of a trademark as an indication of commercial origin.
Across the pond
On a more successful note, Hasbro has very recently been granted a trademark in the U.S. for the smell of its famous Play-Doh which it describes as a “sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough.” It remains to be seen whether they will try to expand this protection to the UK or the EU but they may struggle on the basis of this written description alone. Would this be deemed clear, precise, self-contained, easily accessible, intelligible, durable and objective enough? We’re not so sure.
Also in the U.S., Zippo not only lays claim to trademark protection for the shape of its windproof lighter but now also for its signature click sound. According to the company, over three-quarters of adults would instantly be able to place the sound and, as a result, it now joins a handful of other organisations with trademarked sounds (including the MGM lion’s roar). Not every brand enjoys near-universal recognition for a particular sound associated with its products/services and is thus able to show that such sound is synonymous with its brand and capable of trademark protection. Watch this space to see whether they manage to get EU trademark protection for this iconic sound too.
Have you protected your signature branding?
The evolving and novel ways in which trademark protection may be sought, as illustrated above, can help add another string to an organisation’s bow when it comes to protecting its distinctive branding and deterring copycat infringers. Trademark registration can be a key basis for obtaining relief against domain name squatters, as well as being vital when seeking funding, franchising or selling a business. A huge part of the value of a business lies in its brand and these less conventional marks can be a key part of a brand’s identity too. They help to generate brand awareness, brand associations and brand loyalty. Have you thought about exploiting these opportunities by considering the ways in which you may be able to protect any of your own unique and more unusual branding?
We have designed a range of trademark products which will help protect the future of your business today. To find out more about which aspects of your brand or business may be registrable as a trademark and exactly what is involved in the process (including fees), get in contact with LawBite.
Remember: to check your business’ position regarding IP and trademark, please do make use of the Free Intellectual Property Checklist.
The author of this article, Laura Symons, is an English qualified solicitor with experience working in both private practice and in-house. She has advised a wide range of businesses, with a particular focus on start-ups and the media and entertainment sector. Her work involved advising clients on a broad spectrum of commercial matters, as well as brand protection issues such as copyright, infringement disputes and trade mark registration and opposition.