Non-traditional trade marks: 2005 judgments on registability

United Kingdom

Although the Courts have confirmed on a number of occasions that the test for registrability of any trade mark is the same regardless of the type of mark, consumers are simply not used to seeing these non-traditional marks as indicia of origin, and therefore the majority of applications fail to perform the essential function of a trade mark.

The definition of signs in the Community Trade Marks Regulation and the Trade Marks Act is wide enough to encompass a variety of the so called “non-traditional” trade marks, such as shapes, colours, sounds and smells. However, the registration of such marks for all but the narrowest of specifications has proved to be considerably difficult, with a number of key judgments rejecting such marks from the CFI, ECJ and UK Courts in 2005.

A novel shape conundrum

Although there have been a number of applications to register the shapes of packaging, the ECJ considered a novel concept in Eurocermex SA v OHIM. Eurocermex were the distributor of the well-known Mexican beer “Corona”, and applied to register the characteristics of the product at point of sale as “a three-dimensional shape and colours of a transparent bottle, filled with a yellow liquid, having a long neck in which a slice of lemon with a green skin had been plugged”. Perhaps unsurprisingly, the CFI upheld the refusal insofar as classes 32 (beer, fruit juices) and 42 (restaurants and snack bars) were concerned.

On appeal, the ECJ considered that the CFI had adopted the correct approach by assessing the combination of the features individually (shape, lemon, colours used) for distinctiveness, and then considering the overall impression of the shape of the bottle and the arrangement of colours. However, what is perhaps more interesting is that the ECJ did not consider that a key concept of the mark relied upon the container being opened and the correct type of fruit being inserted by a third party at the point of sale. How could this concept be guaranteed by the proprietor to act as an indication of origin? Would other traders have to issue instructions not to sell similar shaped bottles with a similar lemon in it? Would the mark be infringed if a lime were used? In this context, it is important to remember that the ECJ said in Arsenal v Reed that infringement would not just be considered at point of sale, but could take place some time after.

No smell of success

In Eden SARL v OHIM (Case T-305/04) the CFI considered an application for “the smell of ripe strawberries” for a whole range of goods from washing powder to clothing (classes 3, 16, 19, 25). The mark applied for was represented by the words, together with a visual representation of a strawberry. Applying the Sieckmann criteria, the CFI considered that the mark was not capable of being represented graphically and should be refused. Under the Sieckmann rules, any mark applied for must be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”.

On the applicant’s own evidence before the Court it was apparent that there was not a single smell for ripe strawberries, as this would vary according to type and season so the description was not sufficiently precise. In addition, the image represented the fruit, not the sign, so did not amount to a graphical representation of the mark applied for. The practical consequence of decisions such as Sieckmann and Eden is that until a method of representation can be found to characterise smell by objective standards (such as Pantone for colours or musical notation for sound marks), no registrations are likely to be permitted. These restrictions reflect limitations on the available technology at the Trade Marks Registry, but may also be considered a fair result given the potential for uncertainty for third parties trying to determine the scope of the proprietor’s monopoly.

Other rejections for shape marks were handed down by the CFI in Bic SA v OHIM (shape of lighters) and “Almdudler-Limonade” A. & S Klein GmbH & Co KG v OHIM (shape of a lemonade bottle).

Acquired distinctiveness?

For any trade mark which lacks inherent distinctiveness, it may still be registrable if the applicant can prove that from the use made of it, it has since acquired distinctiveness in the eyes of the average consumer. However, as far as non-traditional marks are concerned, this has proven to be a very high hurdle indeed.

Perhaps the greatest breakthrough for these non-traditional marks in recent years was handed down by the ECJ in 2005, in a case involving a word mark (more specifically, a slogan). On a reference from the English Court, the ECJ gave judgment in HAVE A BREAK (Société des produits Nestlé SA v Mars UK Ltd). In that case, the Court considered whether the distinctive character of a mark (HAVE A BREAK) could be acquired by use of that mark as part of or in conjunction with a larger, composite mark (HAVE A BREAK…HAVE A KIT KAT), and in short, answered in the affirmative.

On a broad level, this was a predictable decision and one consistent with the theme of much of the case law before the ECJ in recent years. The ECJ tends not to accept artificial and technical concepts to exclude evidence in its entirety; as in all such matters, the perception of the average consumer is paramount. On a question of evidence, the key concept is whether the average consumer would see the (shorter) mark applied for as distinctive in consequence of the use made of it by the proprietor (however such use arose). It remains to be seen how the English Court of Appeal will apply this guidance to the evidence of use adduced by the applicant.

A break, or breakthrough?

However, arguably the wider application of the HAVE A BREAK ruling will be of great assistance to applicants seeking to prove the distinctive character of shapes, colours and packaging acquired through use. First, in most instances distinctive packaging, colours or shapes will be used in conjunction with a brand name, or other marks, to which consumers will inevitably pay more attention. Had the ECJ ruled otherwise, protection of the non-traditional element of the mark might have been automatically excluded.

Secondly, and perhaps more importantly, the decision may change the practice in the registries (and the UK in particular) which have previously relied upon a particular interpretation of the decision in Philips, which suggested that distinctive character could only be acquired through “use as a trade mark”, and that recognition/ recollection was not enough. The problem for any applicant is that until the consumer recognises the sign claimed as a trade mark (i.e. indicative of origin), this is not technically trade mark use, so such use would not count towards acquired distinctiveness. Of course, if the consumer did perceive such use as indicating origin, then the mark would probably be inherently distinctive, and registrable in any event. What the ECJ judgment suggests (although it is by no means clear) is that one must look to the end result, not the process, and that if the relevant public perceives the product as originating from the proprietor/applicant, then distinctive character may flow from that use in its entirety: “use of the mark as a trade mark must be understood as referring solely to the use of the mark for the purpose of identifying the goods/services to the relevant class of persons as originating from that undertaking.”

Of course, non-traditional marks still face an uphill struggle to achieve registration, but they may well have caught a break at last.

This article first appeared in our UK Brands Review March 2006. To view this publication, please click here to open it as a pdf in a new window.