2. Generally, the term ―nontraditional marks‖ covers marks, other than
word, figurative or complex marks, that are used to identify products or
services. Following are examples of nontraditional marks:
Colour
Motion
Shape
Sound
Scent
Taste
Touch
5. Graphical Representation
• Graphical representation of the sign must be such
representation of the mark that it can define the mark itself in
order to determine the precise subject of the protection
afforded by the registered mark to its proprietor.
• Next, the entry of the mark in a public register has the aim of
making it accessible to the competent authorities and the
public, particularly to economic operators.
• object of the representation is specifically to avoid any element
of subjectivity in the process of identifying and perceiving the
sign. Consequently, the means of graphic representation must
be unequivocal and objective
6. that Article 2 of the Directive must be interpreted as
meaning that a trade mark
may consist of a sign which is not in itself capable of
being perceived visually,
provided that it can be represented
graphically, particularly by means of images,
lines or characters, and that the representation is
clear
precise
self-contained,
easily accessible,
intelligible
durable
objective.
9. PROBLEMS IF SINGLE COLOURS ARE REGISTERED
SHADE CONFUSION
COLOUR
DEPLETION
ANTI DISSECTION
10. Single Colors — EU
Libertel Groep BV v. Benelux-Merkenbureau (Case C-104/01 (ECJ
May 6, 2003)):
•Application to register the color orange.
•The Court held that single colors marks are capable of
constituting a sign and are eligible for trademark protection if
they can distinguish goods of one undertaking from those of
another and can be defined in a sufficiently clear way.
• To be acceptable graphic representation of the color must be
“clear,
precise,
self-contained,
easily
accessible, intelligible, durable and objective” (these are known
as the Sieckmann criteria). This condition may be satisfied “by
designating that colour using an internationally recognized
identification code,” such as Pantone is a precise and stable form
of verbal description.
11. • While considering the registration of colour per se as
trademark private interest of a single trader has to be weighed
against the public interest of not unduly restricting the
availability of colours of all traders.
f
• Distinctiveness without prior use is unlikely to be present in a
colour per se mark other than in exceptional circumstances.
However acquired distinctiveness may be present.
• The examination of a EU national trademark application
should be stringent to prevent trademarks from being
improperly registered.
12. Heidelberger Bauchemie GmbH (Case C-49/02 (ECJ June 24,
2004)):
•The application was for registration of a trademark, the representation of which
consisted of a piece of paper the upper part of which was blue and the lower part
yellow. The following description accompanied the application: “The trade mark
applied for consists of the applicant’s corporate colours which are used in every
conceivable form, in particular on packaging and labels.” The application listed the
colors under the Pantone® system.
• In order to fulfill its role as a registered trademark, trademark must be perceived
precisely and unambiguously so that the function of the mark as an indicator of the
origin is guaranteed.
•Applications for color combination marks must include “a systematic arrangement
associating the colours concerned in a predetermined and uniform way.” Colour
combination which is not spatially delimited is not sufficiently precise.
•Examination “must also take account of the public interest in not unduly restricting the
availability of colours for other traders who market goods or services of the same type
as those in respect of which registration is sought.”
13. Qualitex Co. v. Jacobson Products,514 U.S, 159,1995
United nations Supreme Court held that the
Lanham Act was very
broad in its definition of what a trademark could be and includes “
any word, name, symbol or device or any combination thereof so
long as it acts to identify source of a particular object”.
Thus a colour could meet the legal requirements for trademark
registration under the Lanham Act provided it has acquired
secondary meaning in the market.
Though colours do not automatically evoke a connection to any
product by themselves, they could take on a secondary meaning in
the course of use in the market thus serving the chief purpose of
trademark, that of identifying the source.
Functionality doctrine was no bar to the registration of colour as
trademark
Colour could be trademarked separately from any trade dress
protection.
14. SOUND MARKS
• Depends on aural perception of the listener
which may be as fleeting as the sound itself.
• If a sound lingers in the mind of the listener
and is so inherently different or distinctive
that it causes the mind of the listener to be
awakened when heard and
• the listener subsequently associates a source
or event with that sound then the sound may
be eligible for trademark.
15. Modes of graphical
represntation
•
•
•
•
•
Séquence of Musical notes
Sonogram
Audio tape recording
Onomatoepic description
Musical notation specifying pitch and
duration of sound
• Electronic application with an attached
sound file.
17. SOUND MARKS – E.U
Shield Mark BV v. Joost Kist h.o.d.n. Memex (Case C-283/01 (ECJ
Nov. 27, 2003)):
•
Shield Mark owned numerous Benelux trademarks for the first nine notes of
Beethoven’s “Für Elise” and the sound of a cock crowing
•
The Court of Justice said a sound mark is registrable provided that “it can be
represented graphically, particularly by means of images, lines or characters, and that
its representation is clear, precise, self-contained, easily accessible, intelligible, durable
and objective.Those requirements are satisfied where the mark is represented by a
stave divided into measures and showing, in particular, a clef, musical notes and rests
whose form indicates the relative value and, where necessary, accidentals.
•
Onomatopoeic description or mere sequence of musical notes would not be sufficient
for the purposes of graphical representation for the pitch and duration of the mark
cannot be determined by them.
18. Sound marks registered in India
• 3- note Yahoo Yodel
• ICICI’s Jingle
• Allianz’s sound mark
20. examples
•
•
•
•
•
•
Smell of rose for tyres
Smell of freshly cut grass for Tennis balls
The odour of beer for dart flights
Smell of plumeria blossoms for yarn
Smell of vanilla for office files
Cherry scent for synthetic lubricants
21. Important Questions
• Whether the smell is an inherent attribute
natural characteristic of the goods?
• Whether the smell added by the applicant is
to identify the goods?
• Will the public regard the smell as sign
which identifies the applicant’s goods?
• Is the mark represented graphically?
22. In Re Clarke , 17 U.S.P.Q 2d 1238(TTAB 1990)
i
• The Applicant was the only person marketing scented yarns
and threads and had emphasized this characteristic of her
goods in advertising
• Fragrance was not an inherent attribute or natural
characteristic of the goods but a feature supplied by the
Applicant
• Applicant promoted the scented nature of her goods in
advertising
• Applicant demonstrated that customers, dealers and
distributors of her products had come to recognize the
Applicant as the source of these goods.
23. Dr. Ralf Sieckmann vs Deutsches
Patent- und Markenamt ( 2oo2)
•
C6H5-CH=CHCOOCH3
(chemical formula)
•
Description
'fruity balsamic smell with a slight hint of
cinnamon'
•
Deposit of sample
•
Combination of these methods
24. • Trade mark may consist of a sign which is not in itself capable
of being perceived visually provided it can be represented
graphically.
• The graphical representation must enable the sign to be
visually represented by means of images, lines or characters
that it can be precisely defined
• Representation should be clear, precise, self contained, easily
accessible, intelligible, durable and objective.
• in respect of an olfactory sign, the requirements of graphic
representability are not satisfied by a chemical formula, by a
description in written words, by the deposit of an odour
sample or by a combination of those elements.
H
25. Shapes — EU — Examples
Philips three-headed rotary
shaver
Coca-Cola bottle
Bang & Olufsen
loudspeaker
Dishwasher tablet
26. CJEU, 14 September 2010, case
C-48/09 P, Lego/OHIM (Mega Brands)
CJEU, 14 September 2010, case
C-48/09 P, Lego/OHIM (Mega Brands)
27. For registration the proprietor of the shape mark must
prove that his mark :
• is capable of being represented graphically
• is capable of distinguishing goods of one trader
from those of another trader
• is not devoid of any distinctive character or, if it
is, has acquired a
• distinctive character through the use that has
been made of it
• does not consist exclusively of the shape which
results from the nature of the goods themselves
• does not consist exclusively of the goods which is
necessary to obtain a technical result; and
• does not consist exclusively of the shape which
gives substantial value to the goods
28. y
Philips Electronics NV v. Remington Consumer Products Ltd (Case C-299/99
(ECJ June 16, 2002)):
• A sign consisting exclusively of the shape of a product is unregistrable
by virtue if is established that the essential functional features of that
shape are attributable only to the technical result.
• Moreover, the ground for refusal or invalidity of registration imposed
by that provision cannot be overcome by establishing that there are
other shapes which allow the same technical result to be obtained.”
• In order to be capable of distinguishing an article for the purposes of
Article 2 of the Directive, the shape of the article in respect of which
the sign is registered does not require any capricious addition, such as
an embellishment which has no functional purpose
• Extensive use of a sign which consists of the shape of those goods
may be sufficient to give the sign a distinctive character.
29. Procedural Requirements for Registering a Shape
Mark in India
Procedural requisites for the filing of shape marks as trademarks are
outlined in The Trademark Rules, 2002. These include:
•A written description of the shape which is intended to be used as a
trademark along with a two dimensional graphic or photographic
representation of the mark presented in at least three different angles of
viewing;
•In case the registrar is not satisfied with the detail in the application, the
applicant may be asked to present the mark in five additional angles of
viewing and a further verbose description of the mark;
•In the case where the registrar is still not satisfied with the application,
the applicant maybe asked to submit a specimen of the shape along with
the application.
