De gustibus et coloribus...
The protectability of non-traditional trademarks

The number of signs which, in the current state of the law, is eligible for protection under trademark law has recently increased considerably. An important cause for this was the earlier amendment of the Trademark Regulation and Directive and also the recent incorporation of these amendments into the Benelux Treaty on Intellectual Property.

Since then, the high-profile requirement of 'graphic representation' has been abolished. Previously, one could only register signs that could be represented in such a visual way, for example by a word, an image, a stave (for sound marks), etc.

The criterion of graphic representation has now been replaced by a clear and precise representation: the sign must be capable of being represented in such a way as to enable the competent authorities and the public to identify clearly and precisely the subject matter of the protection afforded to its proprietor. This can be done, for example, by means of jpg, mp3 or mp4 files.

This amendment facilitated the registration of a number of trademarks (e.g. sound marks) and has added a number of new categories so that the following types of trademarks can now be applied for:

word marks (the word itself, without specific form)

figurative marks (with or without word elements)

shape marks (e.g. the specific shape of a beverage bottle)

color marks (both a single color and a color combination)

sound marks (e.g. advertising jingles)

pattern marks (e.g. very well-known and distinctive clothing patterns)

position marks (a sign in a certain place, such as a red shoe sole)

motion marks (a sign that a certain movement is undergoing, without sound)

multimedia marks (a combination of images and sound)

hologram marks (signs that change appearance depending on the angle of view)

Although the European and Benelux amendments open the door further to other atypical marks, such as scent, taste and touch marks, some time after the introduction of the innovations, there are (virtually) no examples of this yet. It remains difficult to reproduce such signs in an accurate and clear manner.

Chemical formulas were previously rejected by the Court of Justice in the well-known SIECKMANN case, partly because of its lack of clarity for the public. The subject of this case, however, was a rather complex odor, which SIECKMANN described as "balsamically fruity with a slight hint of cinnamon".

The current trend towards the extension of trademark law, however, means that the protection of such atypical trademarks should not be a priori excluded. In the United Kingdom, the United States and especially in Australia, fragrances are accepted as a trademark. The difficulty of the presentation and the resulting clarity for the public can apparently be partly offset by the distinctive character, so that simple and highly distinctive fragrances could be registered as trademarks on more than one occasion. For example, the scent of Play-Doh modelling clay, a rose scent for rubber tires and a beer scent for darts.

Nonetheless, also in Europe and the Benelux there is an (almost isolated) example of a scent mark. At the end of the nineties, a Dutch company, SENTA AROMATIC MARKETING, managed to file a scent mark (for tennis balls) in Europe and the Benelux. The description "The mark consists of the smell of fresh cut grass applied to the product" proved sufficient for the registration.

The value of intellectual property for companies should not be underestimated. This applies in particular to trademarks. The expansion of trademark law is likely to continue in the same direction and create more and more possibilities. This in combination with the abolition of the obstacle of graphic representation makes it increasingly interesting for companies to register their distinctive signs as a trademark.

 

CORBUS ADVOCATEN specializes in trademark law and can assist you in applying for or modifying your trademark.

 

For more information on this subject, do not hesitate to contact Vince Matheussen or Dirk Huygens.

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