Non-traditional trademarks: more hurdles to jump

In order to create more legal certainty with regard to non-traditional trademarks such as sounds and colours, the definition of signs protectable by trademark in Europe has been changed. The requirement of graphical representation has been abolished and the definition now also explicitly includes sounds and colours. In the many news articles that followed the European Commission’s proposals, many felt that registration of non-traditional marks could become a reality under the new trademark law.

However, the fact that a sign needs to be able to be represented in such a way that it precisely identifies the mark is only the first hurdle to overcome when trying to obtain registration for a non-traditional mark. It will often be the nature of the sign that prevents it from being registered, as non-traditional marks will often not be perceived by consumers as a trademark. In addition, the exclusion grounds are now not only applicable to shapes, but also to other characteristics of the sign. So what to consider when trying to obtain a registration for non-traditional trademarks?

The first hurdle: representation

The requirement for graphical representation has been abolished, but there are other aspects to consider about the representation of a sign. The sign still needs to be represented in a manner which is clear, precise, self-contained, easily accessible, intelligible, durable and objective. In addition, the sign needs to be capable of being reproduced on the register in any appropriate form using generally available technology. With regard to non-traditional marks, this will pose a problem.

In 1999 (before the 2002 case of Ralf Sieckmann v Deutsches Patent- und Markenamt), the Board of Appeal accepted an application for a mark denoting ‘the smell of freshly cut grass’; the mark also covered tennis balls. According to the board, the question arose of whether the description of the scent gives clear enough information to those reading it “to walk away with an immediate and unambiguous idea of what the mark is when used in connection with tennis balls”.

The board found the answer to be ‘yes’. However, this exact reasoning lays bare the problem with smell and taste marks. One should not have an ‘idea’ (no matter how clear and unambiguous) about what the mark entails, but must be able to precisely identify the mark. Current computers do not provide the possibility to actually smell or taste the mark. Until they do, smell and taste marks do not seem to stand a chance.

It might be worthwhile looking at other forms of protection for such marks. For example, in the Netherlands there has been discussion about the possibility of having a taste protected on the basis of copyright. The answer to that question is currently unclear. But if the answer is found to be ‘yes’, this would be a viable alternative for trademark protection—at least to the extent that there would be a way to protect such non-traditional signs.

For other non-traditional marks such as holograms and sound marks, the abolition of the graphical representation requirement does make a difference. In practice, the European Union Intellectual Property Office already accepted sound marks by accepting sound files, but the Benelux Office of Intellectual Property did not.

The second hurdle: exclusion grounds

Neither the original proposal of the commission nor the proposed amendments of the European Parliament included reformulating the exclusion grounds. The decision was seemingly out of the blue, forming one of the (many) compromise proposals of the European Council.

The exclusion grounds do not cover only the shape of a sign, but also other characteristics. This is in line with the recommendations of the Max Planck Institute in its 2011 publication “Study on the Overall Functioning of the European Trade Mark System”—but with one major difference. The broadening of the scope of the exclusion grounds now also applies to the ground of substantial value to the goods. The Max Planck Institute proposed to either delete that exclusion ground, or make it possible to overcome that ground when the sign has become distinctive through use.

Examples here are recent rulings in Belgium and the Netherlands about the red sole trademark of Christian Louboutin. In Belgium, the court in first instance declared the trademark to be invalid, as the red sole was found to determine the substantial value of the shoes. The appellate court overturned that ruling, as it found the red sole not to be a ‘shape’.

“WHEN FACED WITH A SIGN THAT MIGHT BE CONSIDERED TO GIVE SUBSTANTIAL VALUE TO THE PRODUCT, AN OPTION WORTH CONSIDERING IS FILING AN APPLICATION FOR A DESIGN REGISTRATION.”

In the Netherlands, in one of several procedures, the court in first instance did find that the red sole determined the substantial value of the shoes. Market research showed that 70% of respondents found the red sole to be appealing. In addition, Mr Louboutin himself stated that he had chosen the colour red because “men find this to be a sexy colour”.

However, the court was not sure whether the substantial value of the goods exclusion ground applies here. The court found it unclear how to interpret the notion of ‘shape’. Is it limited to 3D properties of the sign, or does it also include other (non-3D) properties of the goods, such as colour? The court submitted a request for a preliminary ruling to this effect to the Court of Justice of the European Union (CJEU).

Under the reformulated exclusion grounds, a discussion about the notion of shape is not needed. One can simply argue that the red sole is another characteristic of the goods at hand, as the trademarked sign gives substantial value to the Louboutin shoes. This does seem to leave very little room for trademark protection for signs that are appealing to the consumer, especially since the substantial value exclusion ground is one that is very subjective (one of the reasons for the Max Plank Institute to propose the deletion of this exclusion ground).

This also means that statements from the trademark owner about why the sign is chosen might prove to work against it. When faced with a sign that might be considered to give substantial value to the product, an option worth considering is filing an application for a design registration. The substantial value of the appearance of a product is a reason to obtain a design registration, as it is in fact the appearance that you are trying to protect.

Other benefits to a design registration are that such a registration is not subject to a genuine use requirement as trademark registrations are, and that for a finding of infringement, the other party does not need to use the sign for distinguishing goods and/or services. Another benefit might be the fact that the bar to obtaining a valid (unregistered) design right can prove to be lower than the one for obtaining copyright.

In the Netherlands, the appellate court considered that the design of a bicycle basket did not meet the standard for copyright protection, as it found the design not to be an intellectual creation of the maker, but it did find that the design met the bar for design protection.

The third hurdle: the nature of the mark

As mentioned, the new definition of signs that can function as a trademark explicitly includes sounds and colours. The nature of such marks, however, may make it difficult to obtain a valid registration. In Libertel Groep v Benelux-Merkenbureau,the CJEU reasoned that colours possess little inherent capacity for communicating specific information, especially since they are commonly and widely used to advertise and market goods or services without any specific message.

Sound marks are not by nature incapable of distinguishing the goods or services of one undertaking from those of another but are, like colour marks, found to be less likely to be perceived by the public as an indication of origin. This is shown by a recent ruling of the General Court (see case T-408/15), in which the court found the sound of a ringtone not to be distinctive enough to function as an indication of origin.

Unfortunately, describing the sign by describing its nuances does not make a difference. In the case before the court, the applicant described the nuances of the sound, but this did not make a difference as those nuances will not be noticed by the consumer. For non-traditional signs it is most important to show that the consumer will perceive the sign as an indication of origin—in practice, this will often mean that one will have to prove that such a non-traditional sign has acquired distinctness.

The new trademark legislation does not, at this point, seem to provide more room for obtaining a valid registration for non-traditional trademarks. The first two steps are overcoming the requirement of representation and making sure that the exclusion grounds do not apply. The third one is the fact that a non-traditional sign is less likely to convey a specific message to the public.

When dealing with non-traditional signs, it is therefore wise also to look at other forms of protection, whether copyright or design rights. Needless to say, these forms of protection have their own particulars to take into consideration.

Lenneke van Gaal is a legal consultant and  trademark attorney at  Ploum Lodder Princen. She can be contacted at: l.vangaal@ploum.nl