Non-traditional trade marks: developments during 2004

2004 saw further developments in the field of so-called “non-traditional” trade marks. The ECJ consolidated a number of similar applications in the household goods sector, and handed down “family sized” judgments on the registrability of marks incorporating both shapes and colours.

All washed up

To assist consumers in distinguishing between the various washing machine and dishwasher tablets available on the market, many manufacturers have introduced specific colours shapes and textures to ease identification. Applications to register variations on those tablets have incorporated layers of colour in white/red and white/green (Henkel v OHIM) chamfered, rounded and bevelled edges, layers and speckles of colours, and various other 3-dimensional and colour combinations (Procter &Gamble v OHIM).

In considering an appeal brought by Procter & Gamble the ECJ, drawing on principles from both Linde (an earlier decision of the ECJ regarding the registrability of various 3-D shape marks) and Henkel emphasised that the two stage test applicable to the assessment of distinctiveness for any trade mark was:

• by reference to the products and services for which registration is sought; and
• by reference to the perception by the average consumer of those products and services, such consumer to be reasonably well informed, observant and circumspect.

So far then, the determination is no different for shape or colour marks as for word marks. Where the difficulty arises for non-traditional applications is when the Court comes to consider the attitude of the average consumer to those marks – essentially whether they are perceived to be an indication of origin and therefore able to fulfil the true function of a trade mark. In Procter & Gamble the ECJ concluded:

“average consumers are not in the habit of making assumptions about the origin of goods on the basis of their shape, or the shape of their packaging”.

So how might an applicant be able to make their packaging, shape or colouring of goods distinctive in the eyes of the consumers in order to indicate trade origin? As indicated in Henkel, the starting point must be one of practical application - making the goods sufficiently “different” and unusual from the norm in that particular sector. The more closely the shape sought to be registered resembles the most common shape to be taken by the product in question, the greater the likelihood of that shape being devoid of distinctive character. However, simply making the product unusual and striking in appearance may not be enough to connote trade origin.

Drawing together the decisions of both Henkel and Procter & Gamble in the UK context, the High Court held in Reckitt Benckiser v Robert McBride Limited (on appeal from the Registry) that “unusual” alone is not enough, “the distinctiveness must be sufficient not merely to show that the product is different; it has to go further and demonstrate the trade origin of the product”. In that case, again an application to register variations on dishwasher tablets under the “Finish Powerball” brand, the Court was not persuaded that there was anything in the combination of shape, colour and texture that would inherently suggest to the average consumer that the combination suggested an indication of origin, rather than an indication of contents. On similar reasoning, the ECJ upheld the decision of the OHIM Board of Appeal to deny Mag Instruments a trade mark registration for the shape of their torches, since that shape was no more than an indication as to the nature of the product, not its commercial source, and was in any event simply a variant of a common torch shape.

Shapes and technical results

Although the majority of recent decisions have focussed on exclusions for lack of distinctive character under s.3(1)(b) of the TMA (or the equivalent provision in the Trade Marks Directive), the latest litigation over three-headed shavers in Philips v Remington concerns another exclusion from registrability under s.3(2)(b), being the shape of goods which is necessary to achieve a technical result. Having already had a similar mark held to be invalid, Philips sought to enforce a mark consisting of a 2-dimensional depiction of the head of an electric shaver, with a raised faceplate and the three heads in a “clover leaf” design. Philips had argued that incorporating an embellishment of the standard design was sufficient for validity. Remington, seeking to revoke the mark, had argued that the design was necessary to achieve the technical result of painless shaving, and the minor embellishments in the faceplate did not distinguish from this function. The Court took a robust view of s.3(2)(b) and considered that the clover leaf design did indeed perform a technical function by stretching the skin, thus raising the hairs to make shaving more effective and less painful. In those circumstances, “provided each feature as a whole performs a technical function, it matters not that some minute elements of it may not themselves contribute to that performance.” The mark was therefore invalid and would be revoked.

Colourably distinctive

Following the ECJ’s decision in Libertel, the ECJ had to consider two further references on single colour registrations: KWS Saat v OHIM involving a registration for the colour orange per se in relation to installations and treatments for drying seeds, agricultural and forestry products, and in Heidelberger Bauchemie GmbH for the colours blue and yellow for use in relation to various products, including adhesives, varnishes, paints and solvents. In Heidelberger the ECJ reiterated its decision in Libertel that colour registrations may be permissible provided they are described by reference to an internationally recognised colour classification (e.g. a specific pantone), but that in an assessment of distinctiveness the registry must take into account not only the proposed use of the mark, but the public interest in not unduly restricting the availability of colours for other traders in that field of activity. In KWS Saat, echoing the views expressed in relation to shape marks, the ECJ recognised that although the law did not draw a distinction between the test for registrability for colours and for other types of mark, the relevant public’s perception would notnecessarily be the same for colour per se as they would for a word or a figurative mark. In particular, whilst a colour mark might acquire a distinctive character in relation to goods and services, it was inconceivable that a colour alone could be distinctive without any prior use, save in the most exceptional circumstances,and where the classification for which registration was sought was very narrow, and the relevant market very specific.

A spectrum of registrability

In a case which provides an excellent summary of the current status of the law on non-traditional marks in the UK, Lord Justice Jacob giving the judgment of the Court of Appeal in Bongrain describes the registrability of various types of trade marks as a “spectrum” of distinctiveness. The most distinctive are invented words and fancy devices, then semi-descriptive words and devices, further on can be found shapes of containers, and at the very limit of registrability, the shape of the goods themselves. Signs towards the beginning of the spectrum are likely to be understood by the consumer as identifying the maker of those goods; signs towards the end are unlikely to be able to fulfil the essential function of a trade mark – to guarantee origin – without first educating the consumer that is their purpose. In Bongrain the Court refused to allow the registration of a particular shape for a cheese. As Jacob LJ points out “consumers do not expect to eat trade marks, or parts of them”.

A sweet success

Consumers are well used to logos, brands, devices and word marks as indicating trade origin; they are less so when it comes to shapes, colours, smells and sounds. However, until consumers do grow more comfortable with these concepts, an applicant can still obtain a trade mark registration if they can satisfy the Registry that the mark has acquired distinctiveness through use in relation to those goods and services. On this point, whilst the main focus of the Court of Appeal decision in the Polo case turned on what amendments to an application for a trade mark may be permitted whilst still retaining the original priority date, the background to that decision was that the famous mint had acquired distinctiveness in the minds of the consumers. In those circumstances, the proprietor could claim a statutory monopoly over the dimensions and its shape in relation to mints.