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Unconventional trade marks – visual trade marks

13.08.2021

In a common perception trade marks are most often associated with logo, while this concept is much broader. A trade mark may be the shape of a perfume bottle, the colour of a chocolate wrapper or even the National Stadium in Warsaw. What criteria must be met in order to obtain protection for an unconventional trade mark?

Unconventional trade marks – visual trade marks

A new trade mark

In accordance with Article 120 paragraph 1 of the Industrial Property Law1a trade mark may be any marking if it is capable of distinguishing the goods of one undertaking from those of another undertaking and of being represented on the register of trade marks in a manner which enables to determine the clear and precise subject matter of the protection afforded to its proprietor. Paragraph 2 of the discussed provision contains an example list of trade marks which includes, without limitation:

  • words, including personal names,
  • designs,
  • letters,
  • numerals,
  • colours,
  • spatial forms, the shape of goods or of the packaging of goods,
  • sounds.

The wording of the provision, in force from 2019, is the result of the implementation of Directive 2015/2436 of the European Parliament and of the Council2. A similar definition can also be found in Regulation 2017/10013.

What are unconventional marks?

In the theory of industrial property law, there is a division into conventional and unconventional trade marks. The former includes word, figurative and combined word and figurative marks. The latter includes visual marks (discussed in this article), i.e. shape marks, colours, position marks, motion marks, holograms and patterns, and invisible marks (perceived with senses other than sight), such as: smell, sound, taste or touch.

Shape marks

The first group of marks that is worth looking at are shape signs involving a three-dimensional shape, e.g. of a packaging, container, product itself, or a building. Perhaps the most famous registered shape trademark is the Coca-Cola bottle (EUTM 010532653 – Fig. 1, R.043544 – Fig. 2). Unusual, original shape of the product or packaging may play a role that distinguishes a given product, which means that this shape is protected as a shape trademark.

Rys. 1                  Rys. 2
Fig. 1 - Coca-Cola EUIPO                                                   Fig. 2 - Coca-Cola UPRP

However, obtaining the protection for shape mark is not easy because it should meet several important criteria. And so, above all, such a shape should have a distinctive character. This means that it should differ physically from other, basic, common shapes or shapes resulting from the nature of a given product in such a way that a consumer can easily identify a given product through its shape.

In accordance with the European case law, a shape is not distinctive if it is an ordinary shape or a combination of ordinary shapes (Judgment of the Court of First Instance of 19 September 2001, Ref. No. T-30/00, Henkel v. OHMI) or results from usable characteristics of a given product.

Against this background, e.g. the protection granted as early as in 1934 to the packaging of Nivea cream may be surprising (R.024862 - Fig. 3), which in my opinion does not meet the criteria of distinctive character. However, in combination with the characteristic colour referred to as "Nivea blue", we get a characteristic packaging with distinctive features that is recognizable by consumers.

The most familiar examples include the Chanel No 5 perfume bottle, which was registered as trade mark by the Polish Patent Office in September 1949 (R 034789 - Fig. 4), or the characteristic Toblerone chocolate packaging (EUIPO 000031203 - Fig. 5).

Rys. 3    Rys. 4
Fig. 3 - Nivea                                                                                                      Fig. 4 - Chanel No5

Rys. 5
Fig. 5 - Toblerone

Anyone who would think that there are no heated disputes in the field of the protection of shape trademarks would be wrong. Examples of controversial registrations that resulted in long battles that ended with the revocation of the protection right include: the shape of a Rubik's cube (EUTM 000162784 - Fig. 6) and ... a basic, rectangular Lego brick (EUTM 000107029 - Fig. 7). In the latter case, on the basis of a ruling by the CJEU, the protection right was withdrawn in 2010, but then, after six years, the EUIPO re-registered a shape trade mark of a Danish company.

Rys. 6                Rys. 6
Fig. 6 - Kostka Rubika                                                  Fig. 7 - LEGO             

Interestingly, protection in the EU was granted to the shape of Toffifee candies (EUTM 000784389 - Fig. 8) or the shape of KitKat wafers (EUTM 002097376 - Fig. 9) and ... the Smart car produced by Daimler AG (EUTM 001424399 - Fig. 10). When Easter approaches, chocolate bunnies from the Swiss company Lindt appear in shops. It is worth knowing that in 2009 this bunny with the word element "Lindt" received protection from EUIPO (EUTM 008577298 - Fig. 11). Nine years earlier, an analogous shape trademark was registered (EUTM 001698885 - Fig. 12), but with the word element "Lindt Goldhase". However, the office refused to grant the protection right to the hare itself, without any verbal elements.

Rys. 8  Rys. 9
Fig. 8 - Toffifee                                                              Fig. 9 - KitKat 


 
Rys. 10      Rys. 12

Fig. 10 - Smart                                                                     Fig. 11 & 12 - Lindt Bunny

When discussing shape trademarks, it should be remembered that this category is not limited only to the shape of products or packaging. Practice shows that e.g. the appearance of shops or buildings are also recognized as trade marks (although there is no rule for this).

A flagship example of the first category is the appearance of Apple stores, which has received protection in the US. And in the second category, you can find some examples even in Poland. The most famous is the National Stadium in Warsaw, which was protected by the EUIPO (EUTM 011206001 - Fig. 13).

Rys. 13
Fig. 13 - Stadion Narodowy w Warszawie

Several buildings (or their images) are also registered as trade marks in the PPO. Among them we can find such gems of architecture as the Wawel Royal Castle (R.198839 - Fig. 14) or the Gniezno basilica (R.310716 - Fig. 15). The register also included the Palace of Culture and Science in Warsaw (R.214232 - Fig. 16), but unfortunately the protection right expired in 2017. The protection right of the Warsaw Świętokrzyski Bridge (R.168479 - Fig. 17), which was once the central figure in many feature films, also expired. On a global scale, we can find effective registrations of, for example, the Opera House in Sidney or the New York Empire State Building.

Rys. 14  Rys. 15
Rys. 14 - Zamek Królewski na Wawelu                                                               Rys. 15 - Katedra Gniezno

Rys. 16
Rys. 16 - PKiN w Warszawie

The protection right of the Warsaw Świętokrzyski Bridge (R.168479 - Fig. 17), which was once the central figure in many feature films, also expired. On a global scale, we can find effective registrations of, for example, the Opera House in Sidney or the New York Empire State Building.

Rys. 17
Fig. 17 - Warsaw Świętokrzyski Bridge

Colours, colours

It might seem that colours are so universal that it is impossible to claim them as a protected marking of any product or service. However, it is enough to do a simple test. Let's close our eyes and recall the following brands: Milka, Nivea, Duracell. Our heads visualize specific products that have their shape, but also their characteristic colours.

Colours, as attributes of the natural world, cannot be appropriated by anyone. Of course, most of businesses operating on the market try to use specific colours or their combinations to identify themselves and their products or services. However, the road from market identification and building your identity and recognition based on a specific colour to obtaining legal protection for such a marking is long and difficult. The colour does not have the so-called primary distinctive character, so it is not in itself so characteristic as to clearly indicate a specific product or service. Registration of colours as trade marks is therefore possible only if a given colour acquires the so-called secondary distinctive character, i.e. character acquired as a result of intensive use in trade in relation to specific products or services. 

The case law of the European courts has provided guidelines on the requirements to be met by marks in the form of colours or their combinations in order to be eligible for Community protection. Thus, the representation of the mark must be accurate and permanent, and if two or more colours are combined, their representation should be provided with a detailed description specifying precisely the way of their combination and mutual arrangement. The colours themselves should also be clearly defined, with reference to the commonly recognized colour code (RAL, Pantone or other generally recognized system)4.

Perhaps the most famous colour registration is the one awarded to Kraft Foods. Of course, we are talking about the characteristic violet associated with the packaging of Milka chocolate. The Swiss manufacturer has managed to gain such a position and recognition on the market that in the product category of food products, and in particular sweets, the violet colour automatically evokes a bar of chocolate (perhaps you may also recall the characteristic musical motif from the advertising spot). The colour of Milka chocolate packaging is protected both in the Madrid system, i.e. international (registration according to WIPO: IR-644464), and in the EUIPO (EUTM 000031336 - Fig. 18).

Rys. 18
Fig. 18 - Milka colour

In the European trade mark register you may find many interesting examples of protection rights granted for colours or their combinations. As an example, the dark brown colour characteristic for the courier company United Parcel Service (EUTM 000962076 - fig. 19), the ruby ​​colour of Swiss Victorinox pocket knives (EUTM 002087005 - fig. 20) or the purplish red colour of the packaging of Whiskas cat food (EUTM 003793361 - Fig. 21).

Rys. 19    Rys. 20      Rys. 21
Fig. 19, 20, 21 - Colours of UPS, Victorinox, Whiskas

Some businesses decide to apply for registration of the colour combinations characteristic of their products. And so in the EUIPO registers there are, for example, a combination of green and yellow, characteristic for John Deere agricultural tractors (EUTM 000063289 - Fig. 22), a combination of orange and grey for Stihl tools (EUTM 009388877 - Fig. 23), or two colour combinations Red Bull energy drinks (EUTM 018118483 - fig 24, EUTM 018028411 - fig 25).

Rys. 22     Rys. 23     Rys. 24         Rys. 25
Fig. 22 to 25 - Color schemes of John Deere, Stihl, Red Bull

It is worth mentioning that two of the previously registered trade marks of Red Bull manufacturer in the form of a combination of colours (EUTM 002534774 and EUTM 009417668) have been invalidated due to the lack of precision in the way of combining the colours which allowed for multiple colour combinations. The Court, examining Red Bull's complaint, which it consequently dismissed, stated that a trade mark in the form of a combination of colours should bear a detailed instruction in advance specifying the permanent combination of these colours. The court ruled that registration of a mark is inadmissible, as it allows for a multitude of possible combinations of this mark5.

The Polish Patent Office has granted protection rights to two mobile operators: Orange (R.271601 - Fig. 26) and Play (R.310678 - Fig. 27). Interestingly, the history of the latter entity shows how the market position and brand recognition affect decisions regarding the protection. In the first place, Play applied for registration of a colour as a trade mark in 2010. Then, the protection was refused. The PPO argued its decision with the lack of distinctive character of the mark. However, after seven years of presence on the market and gaining an increasing position on it, the application from 2017 was approved by the Office. This means that the mark (colour), in the opinion of the Office, acquired a secondary distinctive character. 

Rys. 26                     Rys. 27
Fig. 26 - Orange mobile operator                                          Fig. 27 - Play Mobile

Not only what, but also where

An interesting category of trade marks are position trade marks, i.e. marking placed in a specific place of a given product. Such markings, by themselves, most often are not distinguishable, but when used in a specific context, placed in a specific place of the product, they can function as trade marks.

Position marks are nothing more than markings constituting a word, design, logotype, colour or spatial form, which, when used in an appropriate way and placed in a specific place, give the marked product features that allow consumers to recognize its origin. 

Very important in the case of position marks is the distinctive character which is manifested in the fact that the placement of such a mark deviates from the norm or customs of a given sector of the goods or services6.

The most famous position marks on a global scale are the red soles of Louboutin shoes and three stripes placed in a specific position on Adidas footwear. In the first case, it is a colour that does not have the primary distinctive character as such, but which, when placed on the sole of women's shoes, uniquely identifies the origin of the shoes in question. It should be mentioned that in many countries there were lengthy litigation between the Christian Louboutin fashion house and other entities marketing their own shoes with red soles. Long court battles left Louboutin unscathed e.g. from a dispute with Yves Saint Laurent in the USA7 and in 2018 with Dutch company Van Haren Shoenen BV before the CJEU8. The latter case is interesting because the CJEU ruled differently from the opinion of Advocate General Maciej Szpunar, which is relatively rare. The position mark in the form of a red sole is registered with the EUIPO under the number EUTM 008845539 - Fig. 28).

Rys. 28
Fig. 28 - Red sole of Louboutin

In the case of Adidas (EUTM 003517646 - Fig. 29), the marking consisting only of "three parallel equally spaced stripes" was not considered distinctive. On the other hand, when used in a specific "context", i.e. in a specific position of footwear, already has a distinctive character and allows the manufacturer to be identified.

Rys. 29
Fig. 29 - adidas shoe

From the Polish perspective, it is worth mentioning… Żubrówka. In EUIPO, under number EUTM 015289549 (Fig. 30), a position mark was protected consisting of “a single blade of green grass placed diagonally within the bottle, running from the base to the neck, embossments in the form of blades of grass on the sides of the bottle, an embossment in the form of a bison in profile placed below the neck of the bottle […]”.

Rys. 30
Fig. 30 - Żubrówka vodka with a blade of grass

Very interesting examples of position signs combining colour and spatial form are provided by the Polish Patent Office in a series of registrations made for PKN Orlen. The protection rights granted to Orlen cover the colourful elements of the interior of petrol stations, in particular the spatial arrangement of the motifs in red, black and grey (e.g. R.176782 - Fig. 31, R.286826 - Fig. 32).

Rys. 31   Rys. 32
Fig. 31 and 32 - Orlen

In the application for a position mark, the requested mark should be presented through its reproduction showing the mark's arrangement, its size and proportion to the marked goods. The product itself (its elements not constituting the mark - the subject of the application) should be shown in dashed lines. In addition to the presentation of the mark, the application should contain a description of the mark itself and the manner of its placement on the goods, along with specification of colour.

Is motion protected?

Motion marks are another category of marks that go beyond the traditional understanding of this concept. Behind this term are short animations without sound showing a specific movement or changes in the position of the mark or its elements. A motion trade mark in the application should be presented as a video file (in mp.4 format) or as a series of consecutive images / frames.

When examining a motion mark, the office has to consider whether the consumer will perceive the sequence of movement / changing images as a trade mark. In other words, it is necessary to determine whether the application contains elements distinguishing and making it possible to recognize and remember the mark.

Compared to other categories of trade marks, there are relatively few effective registrations of motion trade marks. The most famous and recognizable mark of this type registered in EUIPO include the animation of the HBO station appearing before its productions (EUTM 016147837), or the Finnish Nokia's images depicting hands coming together, (EUTM 003429909 - Fig. 33).

Rys. 33
Fig. 33 - Nokia

Among the latest registrations, it is worth paying attention to the Smith Kline Beecham mark (EUTM 018348702 - fig. 34) and the black panther running animation submitted by Cartier International (EUTM 018194568 - fig. 35). An interesting mark (EUTM 017364481 - fig. 36), for which the application was, however, withdrawn, was the one filed by Red Bull of a video showing the plane crossing the racetrack at the Red Bull Air Race.

  
Fig. 34 - GSM logotype animation                                                  Fig. 35 - Cartier International panther animation


Fig. 36 - Red Bull Air Race Recording

In the Polish Patent Office, we can find, for example, an animation used in advertisements for the Vizir washing powder (R 287049 - Fig. 37), or the famous "revolvers" of the footballer Łukasz Piątek submitted by Fabryka Futbolu (R.329065 - Fig. 38). 

Multimedia marks, i.e. marks consisting of a combination of an image and a sound, can also be included in this category.


Rys. 37 - Vizir


Rys. 38 - "Rewolwery" Fabryki Futbolu

Holograms

A hologram is an optically variable element, i.e. one that changes shape or colour depending on the viewing angle. Such a mark is applied for by submitting a video file or a graphic presentation including shots showing a holographic effect. There are currently four holographic trademarks in the register of the European Union Intellectual Property Office: Google (EUTM 017993401 - Fig. 39), Zwilling JA Henckels AG (EUTM 017579491 - Fig. 40), Arkopharma (EUTM 012383171 - Fig. 41) and Eve Holding (EUTM 002559144 - Fig. 42).

    
Fig. 39 - Google Hologram                                                               Fig. 40 - Zwilling JA Henckels AG Hologram

    
Fig. 41 - Arkopharma                                                                    Fig. 42 - Eve Holding

Pattern

The last noteworthy type of unconventional visible trade mark is a designation in the form of a design (pattern), i.e. a set of regularly repeated elements. Of course, such a mark most often refers to clothing, accessories, but it is also used in relation to jewellery, furniture or car tires. The design (pattern) subject to registration is the external appearance (element of appearance) of the goods or their packaging - in the case of goods such as food, beverages or other goods that are usually sold in containers.

When considering the application, the distinctive character in relation to specific goods / classes of goods, as well as recognizability and "acceptability" of a given design by consumers are examined. Too simple or too complicated a pattern is unlikely to be remembered by the recipients. In order to obtain a protection right, the patters should go beyond the standards or habits adopted in a given product category and should have features that attract immediate attention of a consumer.

Probably the best-known patterns that have obtained protection on a European scale are the famous Burberry check (EUTM 000377580 - Fig. 43) and the characteristic pattern found, among others, on Louis Vuitton bags (EUTM 000015602 - Fig. 44). In the register of the Polish Patent Office, there is, inter alia, the pattern submitted by jewellery manufacturer W. Kruk (R.328414 - Fig. 45) defined as "a graphic representation of a multiplied graphic element in the form of a diamond crown ring pattern. The ring motif with the flared shoulders of the rim has been multiplied and set alternately with the crown facing up and down, creating a repeating pattern”.

        
Fig. 43, 44, 45 - Desenie Burberry, Louis Vuitton & W. Kruk patterns

Future of unconventional trade marks  

Above, I have reviewed the category of visible marks going beyond the traditional concept of a trade mark. Is it an exhaustive list? Certainly not. Human invention is unlimited and with a high degree of probability it can be assumed that in the near future there will be new types of trade marks affecting the sense of sight, perhaps also in combination with other senses. Perhaps the virtual (or augmented) reality or other techniques will be implemented in the creation of trade marks that both European and national industrial property law makers have not even dreamed of.

 

Author:

Piotr Dudek,
Director of the New Technologies Department, Defence & Aerospace
TGC Corporate Lawyers

Learn more: Brexit - the most troublesome areas for business

 

[1] Polish Industrial Property Law of 30 June 2000 (Dz.U.2021.324)
[2] Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (Official Journal of the European Union, L 336, 23 December 2015 and Official Journal of the European Union, L 110, 26 April 2016)
[3] Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (Official Journal of the European Union, L 154, 16 June 2017)
[4] Judgement of the Court of Justice of 24 June 2004, C-49/02, Heidelberger Bauchemie, Blau v. Gelb; similarly: Judgement of the Court of Justice of 6 May 2003, C-104/01, Libertel Groep BV
[5] Judgement of the Court of Justice of 29 July 2019, C-124/18P, Red Bull v. EUIPO
[6] Judgement of the Court of Justice of 12 February 2004, C-218/01, Henkel
[7] Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., No. 11-3303 (2d Cir. 2013)
[8] Judgement of the Court of Justice of 12 June 2018, C-163/16, Christian Louboutin and Christian Louboutin Sas v. van Haren Shoenen BV

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