On October 1, 2017, the European Union Intellectual Property Office (EUIPO) announced major amendments to EU trademark regulations. One of the talking points and the most awaited feature was the ability to register unconventional trademarks. Now, what exactly is an unconventional trademark? Trademark is the face … (Featured image source is for representational purpose alone and has been sourced from http://alphastockimages.com/)
On October 1, 2017, the European Union Intellectual Property Office (EUIPO) announced major amendments to EU trademark regulations. One of the talking points and the most awaited feature was the ability to register unconventional trademarks. Now, what exactly is an unconventional trademark?
Trademark is the face of a business and helps people relate a product or service to a particular brand. However, there might be an instance where a color, smell or sound works as an influencer to recognize a product due to regular use. These attributes become unconventional trademarks. Take for instance the following cases:
- Unique sounds: Remember the roaring of the MGM lion before a Tom & Jerry episode plays? Or the tune when powering up a Nokia phone? Or even the Looney Tunes? You only need to listen to them to associate them with the brand. This uniqueness of these sounds tags them as unconventional trademarks. (For details on more sound trademarks, click here.)
- Unique colors: When jeweler Charles Lewis Tiffany chose a turquoise blue for his company, Tiffany’s catalog, little did he know that the pantone associated with it would refer to the year he started the company in – 1837. Joining Tiffany’s are T-Mobile’s magenta, Barbie’s pink, Cadbury’s purple and 3M’s canary yellow, which makes for an immediate recall of the brand. (You may like reading more on this in our earlier post “TTAB Shows Red Light to Yellow Color as Trademark”).
- Unique smells: Sometimes a particular smell becomes distinctive of a brand. As a first, Japanese tire manufacturer Sumitomo Rubber registered its smell trademark in the United Kingdom. The company had introduced a floral fragrance evocative of roses that was applied to the tires it manufactured. Some of the top scent trademarks registered with the USPTO are Flowery Musk aroma, which is associated with Verizon Store ( 4618936), Bubble Gum fragrance from Grenden for their Sandals (Reg. 4754435), Minty Fragrance of pain relief patches by Hisamitu Pharmaceutical (Reg. 3589348), and Coconut smell (Reg. 4113191) for their stores by Flip Flop Shops.
- Unqiue motion: Sometimes a trademark might not be limited to one image but rather to a set of images representing a motion. An example of a motion mark is EU (CTM) registration number 1400092. This mark is Lamborghini’s moving image trademark signifying the opening of a car.
Prior to the amendment, a trademark in EU was required to be graphically representable to be eligible for registration. The rules stated:
“A Community trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.”(Source)
It is easy to represent a conventional word or image mark graphically. But for unconventional trademarks, a graphical representation may be rather difficult – even impossible in some situations. An unconventional trademark can be graphically represented for musical notes with sentences, or smell marks in the form of a specimen such as a strawberry, or with a crisply written description of the scent, including the way it will be applied. A representation can also be provided for motion marks through a series of images.
However, several dilemmas were associated with the particulars discussed above. For e.g., a smell mark specimen may be very subjective as two people can perceive a single smell differently. Likewise, a layman may not comprehend musical notes. Further, there have been several occurrences wherein a motion trademark was not registered because the motion was too minimal to be presented by a set of images.
To enable businesses to gain legal rights over unconventional trademarks, the rules were amended to read:
“A trademark shall be represented in any appropriate form using generally available technology, as long as it can be reproduced on the register in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner so as to enable the competent authorities and the public to determine with clarity and precision the subject-matter of the protection afforded to its proprietor”. (Source)
A bare perusal of the new rule suggests that there is no longer a need to represent a trademark graphically as long as it can be represented in any appropriate form using generally available technology, which includes sounds and video files.
EU’s change in regulations to graphically represent a trademark eases the process to register unconventional trademarks now. An applicant can now upload .mp3 files for sound marks and video files for motion marks without the complications of graphically representing them. It is inevitable that brand owners will now strive even more to create IP value through unconventional marks, which will tingle the end consumer’s senses and have a long-lasting effect.
(Featured image source is for representational purpose alone and has been sourced from http://alphastockimages.com/)