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Unconventional trademarks – invisible marks

13.10.2021

The logo and visible attributes of a product, such as shape or colour, are not the only elements which may constitute a trademark. This definition is also met by sounds, smells and textures which enable one to identify a given product or service. In the era of growing competition this method is more and more often used by companies to be distinguished on the market.    

Unconventional trademarks – invisible marks

In the previous part of the article we were looking at unconventional visual trademarks, namely those which can be perceived with sight, but which at the same time do not belong to the traditional set of word, graphic and word and graphic marks. However, human cognitive abilities also include stimuli received by senses, such as smell, hearing, touch, which entities offering products or services on the market use or try to use, bringing in sound, scent, texture to get them promoted and identified. Below we will look at these extremely interesting signs.

Definition once again

At the beginning let us remind ourselves what a trademark is. So, in accordance with Article 120 paragraph 1 of the Industrial Property Law1, a 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 in the register of trademarks in a manner which enables to determine the clear and precise object of protection afforded to its proprietor. The wording of this definition is a result of implementation of the Directive 2015/2436 of the European Parliament and of the Council2. A similar definition can be found in the Regulation 2017/10013. Further on, in paragraph 2 the legislator included an open list of trademarks which includes: words, including personal names, designs, letters, numerals, colours, spatial forms, including the shape of goods or of the packaging of goods, as well as sounds.

Even more unconventional brand characteristics

The term “trademark” brings into mind a sign, something tangible which the consumer perceives with the sense of sight. However, not only elements recorded by human eye may be used to identify a brand, products or services. If you watched any film produced by the Metro Goldwyn Mayer media company, you are certainly familiar with the lion surrounded by a movie film. The lion, as befits the king of animals, roars twice with great dignity. And it is this roar of the lion that constitutes a registered, protected trademark (EUTM 5170113; US1395550).

Sound trademarks

The lion of the MGM media company referred to above naturally brings our attention to sound trademarks. It is, as it seems, the least controversial class of unconventional, invisible trademarks.

Before amendments made to both EU and Polish legislation a trademark had to meet one important criterion in order to be registered, namely it had to be graphically expressible. In the case of sound marks graphical representation was and is possible by way of presentation of a musical notation or a spectrogram, i.e. a diagram of the signal amplitude spectrum, namely in other words: a diagram being a “sound visualisation”. When presenting a musical notation with the application, one should remember that it has to be complete, i.e. include not only the melodic line itself, but also all necessary components which enable to read a specific musical piece, i.e.: clef, key, tempo, meter, division into bars, as well as note duration and pauses which enable to replay the rhythm pattern.

Examples of sound trademarks

In the Patent Office there are a number of examples of registration of sound trademarks applied for by Telewizja Polska in the form of a musical notation and a word and graphic mark referring to a specific object of protection. This is the way in which theme music of such productions as “Alternatywy 4” (R.222426), “07 zgłoś się” (R.220733), or “Czterej pancerni i pies” (R.222430) was registered.

Obviously, currently you may also enclose to your application an electronic mp3 file which includes the sound mark applied for and facilitates replaying it in whole.

Legal regulations, either the EU or the domestic ones, do not specify the required minimum or maximum length of the sound mark, thus entrepreneurs have a substantial degree of freedom in shaping the image of their brand by influencing the sense of hearing. However, one should bear in mind that the most important thing is to make recipients to associate a given sound/ melody with the product/service, thus the sound mark cannot be too short or too long. In the first case we could be dealing with lack of acquired distinctiveness, and in the second one – there could be a violation of the rule according to which the mark should be perceived and remembered by the recipient by means of a single cognitive act. Thus, one has to take into account the possibility of refusal of registration of both a single sound, e.g. one g1 quarter note, as well as, e.g. the entire Dies Irae part of Mozart’s Requiem.

Sounds which are related to the designated product or service by function or by type will not be given protection, either. Thus, one cannot expect registration of, e.g. the sound of a turned key to designate entrance door locks or the sound of a working engine to designate a car or o motorcycle.

On 7 July of this year, the Court of Justice of the European Union passed a judgment with court file ref. no. T-668/19 in which it stated that a combination of sounds accompanying the opening of a drinks can cannot be registered as a sound trademark due the lack of distinctive character. The Court stated that there were absolute grounds for refusal of trademark registration in this case. Thus, the Court of Justice of the European Union upheld the previous decision of the EUIPO (R530/2019-2).

The European Office registered the signal of the Twentieth Century Fox film studio which is known all over the world (EUTM012438628). The same musical theme was also given protection in other countries, among other things in the USA (US 2000732).

One of the more interesting sound trademarks subject to EUIPO’s protection is the sound of a male deer registered by Jägermaister (EUTM004928371) or a signal which is a sequence of bird sounds registered by a Polish company Fram24 Sp. z o.o. (EUTM015129547), where in the description of the mark we can read that the noises are made by the swallow, jay, starling, blackbird, swallow hawk and hobby in consecutive order. The last two examples show another way of graphical representation of the sound trademark different from the musical notation, i.e. a spectrogram.

The largest group of sound trademarks subject to EUIPO’s protection are signs including human-made sequences of sounds ordered in a harmonious way in a given unit of time, i.e. music, theme music or synthetically produced sounds. As shown by the considerations made so far, protection is also awarded to the sounds of nature (lion’s roar, bird singing). What is interesting, the EUIPO registered at least one trademark which consists of words spoken by a human, and more precisely produced with the use of ACAT, a special speech synthesizer. What is meant here is one of the most famous sentences of Stephen Hawking: “Look up at the stars and not down at your feet. Try to make sense of what you see and wonder about what makes the universe exist. Be curious”. This inspiring message became the trademark of the executors of the estate of professor Stephen Hawking (EUTM017975948).

The Audi manufacturer managed to register a sound similar to the heartbeat (EUTM 018071642), while the office refused protection, e.g. in the case of the Zippo’s application including the characteristic sound of gas lighter opening and closing (EUTM 017894271), or in the case of the sound of the Piaggio engine (EUTM 017889555).

As an interesting fact let me mention the characteristic breathing sound of the Star Wars Darth Vader registered in the United States Patent and Trade Mark Office (US 77419252), or the humming sound made by “an elegant weapon for a more civilized age”, namely the iconic lightsaber from the same saga (US 77419246).

It is also worth to mention a failed attempt at registering a sound trademark made by the manufacturer of Harley Davidson motorcycles. Harley Davidson have used V2 engines in their motorcycles since 1909. However, also other potentates in this sector, including Suzuki, Kawasaki, Honda and the American Polaris, started to use similar power drives. All those companies along with other competitors filed their objections which, in consequence, after a six-year struggle led to Harley withdrawing their application.

Scent trademarks – can your nose help you recognise a brand?

Both offices awarding protection to trademarks and practising lawyers (as well as legal scholars) have been losing sleep over the issue of scent registration for many years. Through scent one can unquestionably build associations with a given product or brand. Scent may attract consumers in an equally effective way as associations built based on visual or audio stimuli. There is a reason why many brands use special, nice aromas in their shops in order to build clients’ positive associations with the products they offer. These scents are usually common for the whole retail chain, which has an additional impact on the consumer, making him/her to establish a permanent connection between specific scents and a given brand.

However, one has to answer the question if scent can meet criteria defined by legal regulations on which declaring a given sign a trademark depends. Is scent sufficiently distinctive? Is it possible to define scent clearly and unambiguously enough for it to be registered?

In the European (and Polish) context we have to define a certain turning point in time: before the Directive 2015/2436 and from its entry into effect. Before amendment of the legal regulations one of the criteria defining a trademark was the requirement of graphical representation. This was manifested, among other things, by one of the most important decisions within European jurisdiction in respect of trademarks which defined seven criteria of trademark representation known as “Sieckmann criteria”4. The background for this decision was the application filed with the German patent office for registration of a trademark in the form of the scent of a chemical compound called the cinnamon acid methyl ester with the chemical formula C6H5-CH=CHCOOCH3 described as “balsamically fruity with a slight hint of cinnamon”.

Considering prejudicial questions asked by the German court, the European Court of Justice, first of all, concluded that EU law does not exclude the possibility of awarding protection to “sensory” marks, i.e. sound, scent or flavour marks. At the same time, the decision defined requirements of graphical representation of the sign which, on the one hand, should enable the registration authority to comply with all obligations related to, e.g. examination of applications and the keeping of the trademark register and, on the other hand – enable entrepreneurs to obtain precise information about all exclusive rights to a given sign.

The European Court of Justice formulated seven requirements of graphical representation of a trademark which should be:

  • clear,
  • precise,
  • self-contained,
  • easily accessible,
  • intelligible,
  • durable,
  • objective.

In this particular case the European Court of Justice concluded that Ralf Sieckmann’s manner of scent presentation did not meet those criteria. Though enabling one to precisely identify a specific chemical compound, a chemical formula is not intelligible enough for a wider group of recipients – relatively few people will be able to precisely indicate a particular product on the basis of such a formula, and even if they do, there may be problems in identifying the appropriate scent.

As regards verbal description, on the other hand, the European Court of Justice concluded that the description presented in Sieckmann’s application was not precise and objective enough, since the expression “balsamically fruity” is so broad and includes so much content and so many possible meanings that it may lead to different associations for each recipient. The scent sample enclosed to the application was also rejected as not meeting the requirements of graphical representation.

Sieckmann’s test was repeatedly quoted in subsequent decisions of the European Court of Justice. It is worth to note that it remains valid even at present when the requirement of graphical representation has been deleted from the list of requirements applicable to trademarks. In this context it is sufficient to quote at least clause 10 of the preamble of the Regulation 2017/1001 pursuant to which “a sign should be permitted to be represented in any appropriate form using generally available technology, and thus not necessarily by graphic means, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective”.

Despite resignation from the obligation of graphical representation, entrepreneurs can still find registration of scent trademarks in the EUIPO problematic due to the difficulty in presenting such a mark in a manner which is precise and clear enough.

Each of us is known to receive scent information in a slightly different way and use different words to describe it. What is a scent of a ripe strawberry for one person may be a scent of a specific variety of that fruit at a particular stage of its life cycle for another, and still for another person – simply a fruity strawberry scent.

EUIPO consistently refused to register scent trademarks precisely due to the lack of clarity and precision in scent specification. However, still before the end of the previous century, in 1999, a Dutch company Vennootschap onder Firma Senta Aromatic Marketing, after a struggle which started in November 1996, managed to register a trademark described as ”the smell of fresh cut grass” for tennis balls. The OHIM Board of Appeal concluded that the smell of fresh cut grass is so characteristic, well-known and recognised by most of the population that such a description is sufficient for purposes of registration. It was stated that the smell of fresh cut grass is known to everybody from experience. For many people this smell is associated with spring or summer, a well-groomed lawn and also brings to mind other nice memories.

Currently, EUIPO’s databases do not contain any registered scent trademarks subject to protection, which does not mean that such marks are not registered around the world. It is enough to look even at a country which has recently left the EU. In the UK Unicorn Products Ltd. managed to register, among other things the “strong scent of beer on the flight of darts” (UK 000020000234). At present, it seems to be the only still registered scent trademark in the current and former EU member states. Moreover, in the past protection was awarded in the UK to the “floral fragrance/smell reminiscent of roses” applied for by Sumitomo Rubber Co. as designation of … car tyres.

In the USA protection was given, among other things, to such a mark as the scent of the frangipani flower for threads and yarn (registration in 1990, protection right expired), the scent of bubble gum for sandals (Reg. 4754435), or the scent of a strawberry, cherries, grapes for combustion engine lubricants (Reg. 2568512, Reg. 2596156, Reg. 2463044).

According to a WIPO report, currently patent offices from twenty countries (from among 72 which submitted a completed questionnaire) grant protection rights for scent trademarks.

As an interesting fact let me mention that the Mercedes Benz concern introduced a line of four scents used in S-class cars which are supposed to make daily use of the cars more pleasant for their buyers. The idea of registration of these scents is very tempting.

Can a perfume smell be a trademark?

Bringing the current deliberations to an end, it has to be emphasized, which may be quite a surprise for many, that it is impossible, in practice, to be awarded protection in respect of a perfume smell treated as a trademark. This results, first of all, from the fact that a smell of perfume is functionally related to perfume, constitutes their essence. Thus, it as if stems from the nature of perfume, which in itself is a negative prerequisite. This track was followed by the UK Intellectual Property Office when it refused to protect the Chanel No. 5 smell described as “a scent of aldehydic-floral fragrance product, with an aldehydic top note from aldehydes, bergamot, lemon and neroli; an elegant floral middle note, from jasmine, rose, lily of the valley, orris and ylang-ylang; and a sensual feminine note from sandal, cedar, vanilla, amber, civet and musk. The scent is also being known by the written brand name No 5.”. The Office concluded that designation cannot consist exclusively of the shape which results from the nature of the goods themselves. In this case the authority treated shape in a broad sense and drew a right conclusion that scent results from the nature of the product being perfume as such, so it cannot constitute a trademark of itself.

Flavours as trademarks - try and choose

The issue of awarding protection to flavours as trademarks raises just as many, if not more, controversies. Where do these controversies come from? So, the comments concerning the subjective character of the sense of smell also apply to taste. Each of us feels the taste of not only complicated, complex dishes, but also fruit and vegetables, in a slightly different way.

Additionally, one should point to potential problems for flavour designations in passing the “Sieckmann’s test”. How is it possible to present taste in a clear, precise, self-contained easily accessible, intelligible, durable and objective way? Will a description be sufficient, or will it need to be supported with a chemical formula of a compound used to obtain it, or a flavour sample?

Yet another issue which makes one to search in vain for registered flavour trademarks in, e.g. EUIPO and patent offices of European countries (and most of the countries worldwide) is their functional relation to the designated product. This is because flavour is an immanent feature of products intended for consumption. Obviously, one may claim that flavour is not functionally related to pharmaceutical products, but according to EUIPO (EUTM 001452853 – “artificial strawberry flavour” for pharmaceutical products and EUTM 003065539 – “orange flavour for antidepressants”) the fruit flavour of medicines is only aimed at concealing unpleasant bitterness and making them easier to take.

In Europe the only attempt at registering a flavour trademark made so far (still before the critical decision in the Sieckmann’s case) was the “liquorice flavour” registered in the Benelux Office for Intellectual Property for the products from category 16 of the Vienna Classification.

What seems to be relevant from the perspective of this obvious global unwillingness to award protection to flavour trademarks is the very nature and essence of the trademark which should enable the consumer to choose a given product before its purchase and, consequently, before its use (in this case consumption). So, how to combine this function of the trademark with flavour which we get to know not earlier than during consumption?

Also, it is worth to mention that flavour, and more accurately the recipe, of a given food product may be subject to patent protection, which may lead patent offices to the conclusion that awarding protection under another legal regime is completely groundless and unnecessary.

Tactile trademarks

The last type of trademarks which we will be dealing with, namely tactile trademarks, are slightly less controversial. These are marks constituting a specific surface (surface component) of a product characterised by a texture unusual for a given product. The flagship example of a successful registration of such a trademark is the mark applied for in 2010 to USPTO by The David Family Group LLC described as a mark consisting of “a leather texture wrapping around the middle surface of a bottle of wine” (Reg. 3896100). Apart from that, four years earlier American Wholesale Wine & Spirits Inc. gained a protection right in respect of “a velvet textured covering on the surface of a bottle of wine” (Reg. 3155702). What is interesting, in the latter case the image of the bottle used when filing the application to USPTO was that of a Khvanchkara wine which used to be the favourite wine of Józef Wissarionowicz Dżugaszwili who is known in history as Józef Stalin.

Successful registrations also include designation in Braille on beer bottles (registration in Deutsches Patent- und Markenamt under no. 30259811).

Obviously, a tactile mark has to meet all prerequisites set out in legal regulations for all trademarks in order to be awarded protection, and first of all it cannot be functionally related to the product marked.

Future of invisible trademarks

Invisible trademarks are the essence of unconventional marks. They completely escape all traditional definitions of trademarks applicable in the majority of countries all over the world. Marks which appeal to recipient’s senses other than sight still remain in the minority of designations protected and surely this situation will continue to last for a long time, at least until legal regulations concerning trademarks or practices of authorities responsible for their registration become more liberal.

Dynamically developing markets of particular categories of products and services make entrepreneurs to struggle for clients in a more and more creative way, to use new tools which enable to attract consumers and “attach” them to their offer. Human beings perceive the world with all senses rather than sight only, so also in the market game it is recommended, or even required, to influence the senses of hearing, smell, taste and touch, as well. Therefore, there is no wonder that there are more and more attempts at creating invisible marks which would identify a given brand and would enable consumers to differentiate it from the offers of competitors.

However, a question remains open – will regulations and methodology of operation of registration authorities follow market pragmatics? Will the legislator and the officials notice and, what is most important, appreciate this tendency? I hope that the answer to the question so put will be positive, as the world is constantly moving forward and with the constant development of technologies and techniques related to influencing consumers there may be completely new categories of service and product designations shortly coming into play, based on virtual solutions involving augmented reality or artificial intelligence. How will the Patent Office and its foreign equivalents act then? Will they tackle new challenges? Will they face the new reality? The time will show.

 

Author:

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

 

See also: Polish Order – Houses up to 70 m2 without a building permit

 

[1] Polish Industrial Property Law of 30 June 2000 (Dz.U of 2021, item 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 trademarks (Official Journal of the European Union, L 336 of 23 December 2015 and Official Journal of the European Union, L 110 of 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 of 16 June 2017)

[4] Ralf Sieckmann v Deutsches Patent- und Markenamt (European Court of Justice, Judgment of 12 December 20021, court file ref. no. C-273/00, ECR I-11737)

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