A trade mark is a sign used in relation to goods or services so as to indicate a connection in the course of trade between the goods or services and some person having a right to use the mark.
A system for registered trade marks was developed in the nineteenth century and the legal regime is now enshrined in the Trade Marks Act 1994 (TMA 1994). The TMA 1994 implements Council Directive 89/104/EEC, makes provision for the Community Trade Mark (Council Regulation (EC) 40/94) which creates a single trade mark right extending throughout the European Union, and gives effect to the Madrid Protocol for the Registration of Marks Internationally.
The key advantage of registering a trade mark is that the mark is afforded greater legal protection and there is no need to prove elements of passing off and reputation in the mark. The trade mark registration system protects any sign that is capable of being represented graphically: s 1(1) TMA 1994, and currently there is a wide range of marks that are capable of registration including conventional marks such as pictoral marks, eg letters, words, pictures or drawings, and unconventional trade marks including signs such as slogans; three-dimensional (3-D) signs (shapes); colours; sensory signs, for example auditory (sound signs); gustatory (taste signs, olfactory (scent) signs and gestures; action signs; and incredibly, holograms.
The legal purpose of a trade mark is to prevent others from using the mark and benefiting from the goodwill attached to the mark. A trade mark constitutes personal property and a monopoly over a registered trade mark can be renewed by the proprietor indefinitely.
Imagine you are a Trade Mark Examiner employed by the UK Patent Office’s Trade Marks Registry. You have received the following applications to register trade marks. Examine the applications and set out the grounds of any objections you may have to the registration of the proposed marks.
- TM Application 1: 7 DAYS A WEEK, by a taxi service.
- TM Application 2: OLYMPIC, for shaving products for men.
- TM Application 3: the colour RED, for a telecommunications company.
- TM Application 4: the scent of a NUTMEG, by a furniture manufacturer, to be applied to furniture.
- TM Application 5: ‘Catch a wrinkle in time’, for a cosmetics preparation.
- TM Application 6: BACARDI, for a company that produces vodka.
This question should be answered in order that is (a)–(f). The best approach to this type of question is to answer each part in turn, clearly identifying the separate parts of the answer. Unless you are told otherwise, it is reasonable for you to assume that each subsection carries equal marks. This means you may want to allocate equal time to each part.
- Absolute grounds of refusal in the Trade Marks Act 1994 (TMA 1994).
- Relative grounds of refusal TMA 1994.
- Protected emblems and Olympic symbols, London Olympic Games and Paralympic Games Act 2006.
- Colour marks.
- Scent marks.
A trade mark is a sign used in the course of trade to indicate the source of goods or services and distinguishes them from the goods or services of other traders: s 1 TMA 1994. Any sign that distinguishes will meet this requirement, according to the decision in AD2000 Trade Mark (1996). A trade mark is primarily a badge of origin, and it is used so that customers can recognise the product of a particular trader. As a result, trade marks are valuable commercial property and the choice of an appropriate mark requires care and effort. It is not compulsory to register a trade mark, but since registration provides considerable legal advantages it is highly desirable. However, not all marks are capable of being registered as trade marks. The substantive law of trade marks is contained in the Trade Marks Act 1994 (TMA 1994) which implements the Trade Marks Directive (89/104/EEC). A trade mark application is examined to determine if it complies with the Act and whether there are grounds for rejecting it. Objections to the registration of a mark may be raised either by the Trade Marks Registry during examination or by third parties during opposition proceedings. The grounds for refusing registration are divided into two categories:
- absolute grounds for refusal (TMA 1994 ss 3 and 4) which are concerned with objections based on the mark itself; and
- relative grounds for refusal (TMA 1994 s 5); these are concerned with conflict with third-party rights.
(A) TM Application 1: 7 Days a Week, by a Taxi Service
Many trades advertise that their goods or service are provided seven days a week.
The mark breaches s 3(1)(c) TMA 1994, which prohibits the registration of a mark which consists exclusively of the ‘time of rendering the services’ and therefore is exclusively descriptive. However, a mark falling into this category could still be registrable if it has become distinctive in use, but this appears unlikely here.
The mark is also possibly in breach of s 3(1)(d) TMA 1994 because it could be considered to be customary in the current language.
Both reasons are ‘absolute grounds’ for refusal.
(B) TM Application 2: Olympic (Word Mark), for a Company’s Men’s Shaving Products
This mark is in breach of s 4(5) TMA 1994 as a specially protected emblem. In the United Kingdom special laws have been passed to give extra protection to some of the Olympic Games’ marks. The proposed mark also breaches s 3(1)(a) of the Olympic Symbol etc (Protection) Act 1995 (OSPA) because the word ‘Olympic’ is a protected word under that Act. The OSPA protects the Olympic and Paralympic symbols, mottos and various words. Added protection is provided by the new London Olympic Games and Paralympic Games Act 2006. This prevents the creation of an unauthorised association between people, goods or services and London 2012.
(C) TM Application 3: The Colour Red for a Telecommunications Company
In the UK, the concept of a sign or trade mark is very wide and includes non-conventional trade marks such as a single shade of colour or a colour combination. The decision in Phillips v Remington (1998) provides that anything that conveys information can be regarded as a sign. Section 1(1) TMA 1994 states that the sign must be capable of being represented graphically. This can be done by citing the Pantone colour identification system number in the trade mark application: Libertel (2003).
(D) TM Application 4: The Scent of a Nutmeg – by a Furniture Manufacturer to be Applied to Furniture
A ‘scent mark’ or ‘olfactory mark’ is regarded as a non-conventional mark which is more difficult to register because of the difficulty of representing the scent graphically, as required by s 1(1) TMA 1994. A sign must be represented in such a way that a third party is able to determine and understand what the sign is. In the case of Ralf Sieckmann (2002), the ECJ constructed a test which provides that the graphic representation must be:
- easily accessible and intelligible;
- durable; and
Before the decision in Sieckmann some scents had been registered as trade marks using written descriptions of scents, which had previously been regarded to meet the graphic representation requirements of s 1(1) TMA 1994.
Following the decision in Sieckmann, verbal descriptions, chemical formulae and a sample were all rejected as being insufficient to graphically represent a scent. As a result, it is highly unlikely that olfactory signs will be registrable as trade marks in the foreseeable future.
(E) TM Application 5:‘Catch a Wrinkle in Time’, for a Cosmetic Preparation
Slogans are registrable as trade marks provided that they have the capacity to individualise the goods or services of one undertaking provided they are not comprised of signs or indications which directly describe the goods or services or their essential characteristics, and are not devoid of distinctive character for any other reason.
In Nestlé SA’s Trade Mark Application (Have a Break) (2003), the High Court ruled that registration of these words would not be granted as a trade mark because the phrase was not distinctive. However, the slogan ‘Catch a wrinkle in time’ probably is distinctive because it is fanciful and therefore is likely to be registrable. In ‘Das Prinzip der Bequemlichkeit’ [‘The Principle of Comfort’] C–64/02 P, the ECJ stated that slogans serving a promotional function which is not obviously secondary to any trade mark meaning will be objectionable because average consumers are not in the habit of making assumptions about the origin of products on the basis of such slogans. Further, it is clear that the slogan is not descriptive of the product and therefore is in breach of s 3(1)(c) TMA 1994.
(F) TM Application 6: Bacardi, for a Company that Produces Vodka
It is well known that the mark BACARDI is associated with the alcoholic rum drink. Here, there is likely to be an objection to registration of the mark in connection with spirit that is vodka-based on the relative ground of refusal contained in s 5(2)(a) TMA 1994. Section 5(2)(a) provides that a trade mark shall not be registered if it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected. Vodka and rum are similar goods as they are both spirits (alcoholic drinks). Although the products have very different producers, it is common to find them being bought and sold by the same merchants and customers, and sold through the same outlets.
The problem question in this case requires you to analyse the trade marks listed as (a)–(f). It would be a mistake not to mirror this (a)–(f) structure in writing your answer. This question comprises six parts, each involving issues of similar complexity, so make sure your answer is appropriately balanced between these parts.
Do not repeat vast chunks of statutory material even where relevant. The key is to use your own words in condensing the relevant provisions and applying them to the proposed mark.
Should colours or scents be protected by trade mark law? What problems may arise in protecting them? Critically analyse the relevant legislation and case law.
This question requires the student to consider unconventional signs at the cutting edge of trade mark law. Students should discuss the following in the body of their essay:
- Colour or scent marks as an unconventional sign or badge of origin.
- Libertel Group BV v Benelu-Merkenbureau (2004).
- Section 1(1) TMA 1994 and the PANTONE colour identification system.
- Colour depletion theory and the shade confusion theory.
- Ralf Sieckmann (2002).
A trade mark is a ‘sign’ or ‘badge of origin’ that is used to identify certain goods and services as those produced or provided by a specific person or enterprise. A trade mark helps to distinguish those branded goods and services from similar ones provided by another trader. Trade marks fall into two categories, namely conventional and unconventional trade marks. Conventional trade marks include pictoral marks such as letters, words, pictures or drawings. The range of non-conventional trade marks include signs such as slogans, three-dimensional (3-D) signs (shapes), colours, sensory signs (for example auditory sound signs, gustatory taste signs, olfactory scent signs) and gestures, action signs and even holograms.
Is a colour or a scent capable of acting as a sign or a badge of origin as required by s 1(1) TMA 1994? There is no statutory definition as to what is meant by the term sign and there are very few restrictions placed on what may be registered as a trade mark. In Wrigley/Light Green (1999) the notion of a ‘sign’ was interpreted as being a very broad, open and general term encompassing all conceivable types of marks. Accordingly, the concept of a ‘sign’ in current UK trade mark law is very broad.
Section 1(1) TMA 1994 provides that to be registrable, a trade mark must be a sign capable of graphical representation. Additionally, the mark must be distinctive, not be descriptive, nor be excluded under the TMA 1994.
Does trade mark law currently protect colour or scent signs? The answer to this question depends on whether the unconventional marks are capable of graphical representation. In the past there have been difficulties with graphically representing unconventional marks such as colours and scents. However, while there is now a solution for graphically representing colour marks, the same cannot be said for scent marks.
While not specifically mentioned in s 1(1) TMA 1994, it is clear that colours are prima facie registrable where they are used as a trade mark. The main problem will be showing the mark is distinctive. In the leading case on colour marks, Libertel Group BV v Benelux-Merkenbureau (2004), Libertel was refused registration for the single colour orange (depicted without any reference to a colour code) by the Benelux Trade Mark office. The ECJ was asked whether a single colour could be distinctive. The ECJ held that it must decide as a preliminary matter whether a single colour could constitute a trade mark. The ECJ stated that that colour cannot be presumed per se to constitute a sign (without more), since it is normally merely a property of things. However, depending on the context, a colour may constitute a sign. A specific shade of colour can be registered, either as a single colour, or as a colour combination. Some examples of colour marks include colours applied to:
- pharmaceuticals (Smith Kline and French’s Trade Mark (1975));
- stripes on toothpaste (Unilever’s Application (1984));
- single colours (such as orange for ‘technical and business consultancy services in the area of plant cultivation, in particular the seed sector’: KWS Saat AG v OHIM (2002)).
Applications usually include a colour specimen, but these are not sufficiently durable according to Libertel (2004), and the graphic representation of a colour now requires the designation of the colour using an internationally recognised colour identification system, for example PANTONE. In assessing the potential distinctiveness of a given colour as a trade mark, regard must be had to the general interest in not unduly restricting the availability of colours for other traders in the same field. However, this leads us to the policy arguments against the registration of colours as trade marks. In this regard, there are two particularly interesting theories to explore: the colour depletion theory and the shade confusion theory.
Colour Depletion Theory
This theory advocates that by registering one colour as a trade mark, the choice of colours left to other manufacturers will then be more limited. The more colours that are trade marked in one area of trade, the fewer the colours will be available for other manufacturers, and the list of available colours will therefore run out. Granting trade mark protection for colours is thought by some to be unfair and anti-competitive. Whilst the virtually unlimited combination of letters ensures that word marks do not hinder competition, the same is not true in relation to colours. It is argued that the limited quantity of colours, and the need for one type of colour as opposed to another in a given area of trade contributes to a state of unfair competition. This contention has been respected very strictly in the Netherlands, where the Benelux Trade Mark Office refused to register the single colour orange as a trade mark on the grounds that, inter alia, the colour orange played an important role as a national colour: Libertel (2004).
This essence of this theory is that colours cannot function as trade marks because colours and their different shades can easily lead to confusion. This is a valid point not merely for infringement procedures but also when consumers are choosing goods prior to purchase. Using only slightly different shades of one colour as trade marks is likely to create confusion in the mind of consumers. Such potential for confusion allows us to infer that colours scarcely help consumers to identify the manufacturer of the goods on which the shade of the colour is applied, thereby failing to serve the prime purpose of trade marks as a sign capable of distinguishing enterprises or as a badge of origin.
Scent or olfactory marks also encounter practical difficulties carving out a monopoly and they are unlikely to be registrable in the foreseeable future. The leading case is Sieckmann (2003), where an application for a Community Trade Mark (CTM) described the structural formula of a pure chemical for a particular scent and stated that samples of the scent might be obtained from local laboratories. The scent was also described verbally as ‘balsamically fruity with a slight hint of cinnamon’. The German Patent Office rejected the application. On appeal, the German Patents Court considered that scents could, from an abstract point of view, constitute an appropriate means of distinguishing the products of one enterprise from that of another, but it expressed doubts as to whether an olfactory mark was capable of being graphically represented. It referred the question to the European Court of Justice (ECJ). The ECJ was asked to decide whether the requirement for graphical representation could be satisfied by a chemical formula, a description, a deposit, or a combination of these elements.
The ECJ rejected ‘verbal description’, ‘chemical formulae’, or a sample as being insufficient to graphically represent a scent. It held that none of these methods of representation would suffice and a combination of these options would be even less likely to do so. According to the Court, for a sign to be registrable under Art 2 of the Directive, it must have a distinctive character and be capable of being represented graphically in a clear and precise form that is understandable to the majority of manufacturers and consumers. The Court did not consider it possible to represent a scent with sufficient clarity and precision so that it was understandable to all.
Before the decision in Sieckmann, scent marks were registrable but the current position is that registration of scent marks seems unlikely until an agreed system of graphic representation exists. This will be difficult because although a scent is unique, the molecules of a scent must have actual contact with the potential consumer. The further away the consumer is from the scented product, the more difficult this will be. This problem is even more complex when factoring in any environmental conditions affecting the scent. Temperature, the level of humidity and wind conditions can change the strength of a scent. These factors can make the scent more difficult for the nose to detect as well as potentially altering the chemical composition of the scent, making it a different one than originally existed. A scent will also be altered when other scents interact with it. Due to its gaseous nature, a scent is very easily modified by the existence of nearby smells. That said, virtually every single individual’s perception of a scent is different depending on the surrounding environment, the distance between the human body and the scent, whether the person experiences sinusitis, etc.
In conclusion, ‘non-traditional’ trade marks comprise a number of different types of trade marks which do not belong to the conventional categories of words, numerals, pictorial and logo marks, or a combination of these marks, and yet still serve the essential purpose of a trade mark by uniquely identifying products or services as being from a particular undertaking. In the United Kingdom, colours have been granted trademark protection when used in specific, limited contexts such as packaging or marketing. Nor are scent marks currently able to meet the requirements of graphic representability. A chemical formula for the scent, description of the scent in written words, or deposit of an odour sample or by a combination of those elements remains insufficient.
Avoid devoting too much of the essay to trade mark law relating to traditional marks, eg word marks, logos etc. The focus should be on non-traditional marks which are often difficult or impossible to register, but which nevertheless fulfil the essential trade mark function of uniquely identifying the commercial origin of products or service. Essays should focus equally on colour marks and scent marks and the European Court of Justice decisions in order to attract the maximum award of marks.
Think critically about different causes or consequences of granting trade marks over colours and scents. Support your thinking with examples and case law. With a question like this, you could expound on the policy reasons underpinning the reluctance to expand trade mark law to protect certain non-traditional trade marks.
L’Oceane plc is a producer and marketer of luxury perfumes. The company was established in the mid-19th century and had traded in the UK for over a century. It is the proprietor of well-known UK registered trade marks, some in the form of word marks alone, and others being word and figurative marks including a representation of a wave-shaped bottle and packaging for its best-selling ‘Vagues de Desire’ (waves of desire) perfume. L’Oceane invested in expensive advertising for its ‘Vagues de Desire’ perfume across several media, employing a famous and beautiful actress as the ‘spokesmodel’ for its campaign.