The future for non-traditional trade marks in Europe

The suggestion that Europe should remove the graphical representation requirement from trade mark registrations won't open the floodgates to non-traditional marks... at least not yet,

By Mark Devaney

June 2011

Last month, the long-awaited 290 page study looking at potential improvements to the trade mark regime in Europe landed on the European Commission’s desk. One recommendation of the Max Planck Institute’s "Study on the Overall Functioning of the European Trade Mark System" in particular caught the imagination; the suggestion that the current graphical representation requirement be removed from both the Trade Marks Directive (TMD) and the Community Trade Mark Regulation (CTMR).

Over the years this requirement to represent trade marks in graphical form has proved a thorn in the side of brand owners hoping to register non –traditional trade marks. After all creating a picture of a smell or a sound, for example is far from intuitive. So could removing the requirement open the floodgates for the registration of new sorts of mark, and transform the way that trade mark attorneys work?

The potential for non-traditional marks is indeed great. Forward thinking brand owners continue to look at ever more inventive ways to communicate with their consumers and have attempted to move beyond the strictly visual, traditionally through words and logos, but also shapes, into other mediums including sounds and even smells and tastes.

But protecting these so called non-traditional trade marks has proved far from simple. Quite aside from the particular difficulty of proving that such trade marks are distinctive the added burden of the graphical representation requirement has scuppered many brand owners’ hopes.

Those that haven’t immediately given up have been forced to attempt all manner of “graphical” ways to describe non-traditional marks in applications for registration - often opting in the end for simple verbal descriptions. However, in many cases these attempts have failed, rejected on the grounds that they are not graphical representations of the trade marks themselves or do not clearly define the scope of protection sought. Smells and tastes in particular have been near impossible to register, thereby making it difficult for brand owners to enforce them.

Sound marks

Sound marks have generally been easier to protect since the Shield Mark case (C-283/01) established that musical notation is sufficient to meet the graphical requirement. In that case, the ECJ also held that mere worded descriptions of sounds did not meet the graphical representation requirement.

Of course, musical notation is not appropriate for non-musical sounds, however in such cases spectrograms or images of sound waves should satisfy the graphical representation requirement. At OHIM, such applications are currently supported by the addition of a sound file.

Given the technology available, it is easy to see how the removal of the graphical representation requirement would affect sound marks: The simple depositing of a sound file with online trade mark applications particularly would seem to be a relatively easy task for most brand owners.

Scents and Tastes

In the realm of the olfactory, things are not so simple. The difficulty can be seen most clearly by examining the Sieckmann case that came before the European Court of Justice (ECJ)in 2002 (C-273/00). It concerned the protectability of smell trade marks and the Applicant used a number of methods to attempt to graphically represent the mark: a chemical formula; a verbal description (“balsamic-fruity with a slight hint if cinnamon) and a sample. None of them, either alone or in combination were held to be sufficient to meet the graphical representation requirement. Notably, despite refusing the application the court went out of its way to re-affirm the fact that non-visual signs may be still trade marks - encouraging news one might think for owners of non-traditional marks. The caveats were that there must still be some form of graphic representation and that this had to precisely identify the sign. The court held that the representation must be self-contained, easily accessible and intelligible. It must further be durable, unequivocal and objective. Case law has established that chemical formulae are not intelligible to the "average consumer" and so fail to meet the Sieckmann criteria.

The combination of these criteria has proved almost insurmountable. Where prior to Sieckmann OHIM accepted an application with the description “the smell of fresh cut grass” as its graphical representation, subsequent to the case similar applications have consistently been denied registration, an example being an application for a smell mark graphically represented as the “smell of ripe strawberries”. So while in theory scent marks could qualify for protection, it would appear that the current graphical representation requirement effectively closes the door on such registrations.

It remains to be seen if the Sieckmann criteria will be interpreted by the courts as continuing to apply more generally to ways of representating trade marks other than through purely graphical means. However, that’s the view of the study, and if its recommendations are followed there would still be a requirement that the representation of a mark be precise, self-contained, easily accessible, intelligible, durable, unequivocal and objective, in whatever form that representation takes.

Assuming the graphical requirement disappeared, where would that leave us? As with sound marks, technology may one day provide a way forward provided that brand owners can find a way to represent a scent in an application, and of course that they meet the distinctiveness requirements which will no doubt still preclude many such applications.

Having said that, it is difficult to see how this might work in practice. Whilst sound files are easy to send and access electronically, media for transmitting tastes and scents are not so readily available. It is difficult to see that a digital representation of a smell (perhaps a readout from a gas chromatograph) would meet Sieckmann’s demand that the filing be intelligible to the average consumer. Could scents and taste samples be deposited at the trade marks office? Perhaps, but even if they could, it is difficult to see how a scent could meet Sieckmann’s requirement of durability over a period of time, particularly since a trade mark registration can remain in force indefinitely.

Practical considerations for practitioners

Still, lets assume that these problems are overcome, that trade mark owners are able to find ways to represent the types of non-traditional marks discussed above that would satisfy the respective European trade mark offices, what would that mean for trade mark practitioners?

The first step for most brand owners when considering adopting a new trade mark is to conduct an availability search. In the case of visual marks, that process is a fairly straightforward one, and there are numerous databases carrying the relevant information for brand owners to make informed decisions. However, for non-traditional marks, without visual information regarding the scope of protection, it is difficult to see how a search could easily be conducted and consequently how assessments could be made as to whether a later mark is likely to infringe an earlier one.

Perhaps even more interestingly, in the absence of graphical information, and the significant amount of case law governing the comparison of visual word or design marks or those graphically represented, how does one begin to assess similarity, and how will the scope of protection these marks enjoy be judged?

Taking the example of sound marks, the current need for graphical representation means that a visual assessment can be made, the musical notation giving a graphic indication as to the resulting sound. If the assessment is to be made purely based on the actual sound of the mark, it seems that there is likely to be much more scope for interpretation since perception of sound arguably differs according to the listener. This subjectivity in interpretation is perhaps even more applicable in the case of tastes and scents, which are even more subjective and variable human senses.

All of this makes for some interesting scenarios. How will we be assessing similarity in the future? And will advances in technology mean less of a traditional role for the trade mark practitioner in making the assessment? We already have "audio fingerprinting", where it is possible to accurately identify content by digital analysis of audio and video image signals. Perhaps we are not far from the day when we submit an audio file to an automated system and the technology returns possible or likely matches. However, it is difficult to see how the final assessment could be made in this way, and surely there would still be a need for a human ear comparison.

As far as scents are concerned, will we one day see a flood of sommeliers taking the stand as expert witnesses to testify on the similarity of two smells or a new aspect to qualifying examinations for trade mark attorneys perhaps?

Conclusion

Whilst the suggested removal of the graphical representation requirement might at first sight appear to have the potential to open the floodgates to non-traditional marks, in practice it won’t... at least not yet. Any relaxation will not have much immediate impact on the registration of sounds, where musical notation and images of sound waves seem to satisfy the courts, and the technology exists to deposit samples of sounds easily. It might impact how searches and comparisons of marks are carried out however, and here audio finger-printing technology may become a part of the trade mark practitioner’s armoury.

When it comes to scents and tastes, the picture is more complicated. There appears to be a fundamental tension between the requirement that the representation be intelligible, which currently appears to rule out chemical formulae or digital analysis and the requirement that the representation be durable, unequivocal and objective, which would seem to rule out deposited smell samples.

Even if these hurdles can be overcome, it is clear that trade mark owners will still need to meet the current strict requirements for registration both in terms of representation and distinctiveness. However, if the Max Planck study’s recommendations are adopted, it seems inevitable that at some point a change will come. When it does, practitioners may well be looking at a whole new way of assessing the similarities between marks and a raft of new case law will likely follow.

A version of this article originally appeared in Intellectual Property Magazine