By Sidhartha Jatar

Introduction

Conventionally, trademarks have been associated with words, symbols, logos, numerals and pictures. The trend towards registering shapes, colours, scents, tastes and textures is a fairly recent one. Internationally, while legislative changes in trademark law in several countries have been driven by treaties such as the TRIPS ( which sets down a standardised and inclusive legal definition ) , in the case of EU member states, the scope of trademark registration was widened by the First Council Directive of 1988 as introduced by the Council of European Communities. This Directive sought to harmonise the laws of the EU pertaining to trademarks. At that time, it caused considerable excitement because of the opportunities it posed for producers.

Article two of the Directive sets out three criteria for a mark to be considered a trademark:

a) the mark must be a sign

b) the mark must be capable of being graphically represented

c) the mark must be capable of distinguishing goods or services of one undertaking from those of another

The UK Trade Marks Act, 1994 sought to implement the trade mark regime set out by the Directive. One can say with certainty that non-conventional marks in the UK (and similarly for other EU member states) would not have been registrable prior to the Trade Marks Act of 1994. Thus, the Directive is a milestone in the development of the law of trademarks in Europe.

In this note, two important issues shall be discussed:

• The impact of the graphical representation requirement on colour marks and scent marks in the European Community and the U.K
• The justifiability of delimiting registration of non-conventional marks through the use of an arguably procedural requirement.

Scent and Colour marks

At the outset, it must be mentioned that although scent and colour marks are both non-conventional marks, they are different by virtue of their nature i.e. Scent is non-visual while colour is visual. Thus, the impact of the graphical representation requirement on them differs in degree.

A. The case with scent marks:

The first case by the ECJ considering an ‘unusual’ mark was Sieckmann v Deutsches Patent-und Markenamt. It was concerned with the registration of a ‘methyl cinnamate’ scent which the applicant had described as ‘balsamically fruity with a slight hint of cinnamon’ and the application to which was attached a formula for the purpose of fulfilling the criteria.

The ECJ ruled that the requirement of graphical representation was not satisfied by:

· Scientific formulas

· Description written in words

· Depositing a sample of odour or

· Combination of these methods.

Thus, even though the description of the smell in words or through a formula was graphic, it was held to be insufficiently clear, precise and objective. Similarly, a sample of odour was said to fail the durability test.\

In particular the ECJ said that the representation had to be:

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

These criteria have subsequently come to be known as the ‘Sieckmann seven’.

The court also confirmed that Article 2 of the Trade Mark Directive covered signs that cannot be perceived visually, as long as they were capable of being represented graphically by means of images, lines or characters.

Impact of Sieckmann

The Sieckmann case set a very high standard for fulfilling the criteria for graphical representation. Its impact was universal and affected scent, colour, taste, shape and sound marks.

Prior to Sieckmann the Office of Harmonization for the Internal Market (OHIM) gave much leeway to smell marks. E.g. A registration for the ‘smell of fresh cut grass’ in tennis balls was accepted in the year 2000. However, in Sieckmann the European Court of Justice referred to this case as ‘a pearl in the desert’. Thereafter, there has been no further registration of scents in the UK.

The above condition begs the question as to whether it is practical to expect a scent to be represented graphically when it is inherently non-visual in character. The Sieckmann decision blows a death-knell to the possibility of registering scent marks. Although theoretically a scent remains registrable, in practice the case closes the door to smell marks in Europe. It also leaves vulnerable prior registrations as well as future registrations that may creep through.

B. The case with colour marks

There have been numerous applications to register colours and colour combinations as trademarks both in the United Kingdom and as Community trade marks.

In the famous case of Libertel v Groep BV v Benelux- Merkenbureau, the ECJ taking into consideration the Sieckmann criteria ruled that a colour sample did not fulfil the requirement of durability and that this requirement would have been fulfilled if an internationally recognised colour code were used instead.

Thus, the court held that provided the representation indicates a systematic arrangement of associating the colours in a predetermined and uniform manner (like an international codification system such as Pantone would), a colour mark was likely to get past the stringent criteria of Sieckmann and cross the hurdle posed by the graphical representation requirement.

In Orange Ltd’s application in Libertel, since the application to register the colour orange as a Community trade mark was not well represented (not even a Pantone number defining the shade of orange claimed was used), the company lost out on its application.

It should be noted that the emphasis on the international colour code system suffers from the objection that the precise nature of the trade mark is not perceptible without the need to consult some external information, such as a colour chart[1]. This leaves slight room for doubt as to whether or not the accessibility criteria of Sieckmann is fulfilled although as of now this potential show-stopper has not risen its head above the water. Thus, colour too is adversely affected by the requirement of graphical representation.

Justifying the Law

In Heidelberger Bauchemie Gmb, the ECJ stressed on three purposes of graphical representation:

a) to define the mark so that it is possible to determine the precise subject of the protection in order that the general public as well as the authorities know exactly what is being claimed as a mark

b) to assist the authorities in carrying out an examination of applications and maintain a precise register of trademarks

c) to ensure that other traders know the competitors’ claims and rights

With respect to the third point mentioned above, it is crucial that other producers are aware of the exact nature of the trademark and have easy accessibility to it. This is more so because there are heavy penalties involved and potentially high losses in case a producer violates a registered trademark.

Thus, the argument for the need of stringent requirements of representation prior to registration of a trademark is a tenable one. There is little doubt that a trademark must be represented in the manner laid out by the courts in Sieckmann. The issue, however, revolves around the continuing requirement for the mark to be represented ‘graphically’. Although the legislation does not define the word graphic, the dictionary meaning of the term indicates the requirement for a representation either by writing or by drawing. Thus, invariably, the requirement acts as a hindrance in registering non-visual marks such as scent marks and sound marks.

Non-conventional marks: A policy perspective

There is a need to examine in brief non-conventional marks from a policy perspective:

· What are the pro’s and cons of allowing the registration of non conventional marks? Ought they to be protected in spite of the fact that their essential characteristics lie intrinsically in the nature of the product?

· Is there a possibility that a liberal regime with regard to registration might open up a Pandora’s box whereby a plethora of marks would gain entry to the trademark registry and result in a monopoly for trademark owners?

· Would the registration of non-conventional marks such as scents catalyse the distancing of trademarks from their essential function of acting as badges of origin to becoming tools for businesses to boost product sales and rake in money?

· Is the race to acquire trademarks in non-conventional signs a by-product of the economic incentive behind an extention of term (which trademarks provide because of their renewability)?

The above questions need to be thoroughly debated and discussed. In case any threat is perceived to public interest, the legislature may either disallow registration of the marks in question or else regulate stringently their registrability. The point of concern, however, is that no decisive step in this direction has being taken. Visibly, the graphical representation requirement has become an ‘alibi’ for legislators to wash their hands off a policy debate on the desirability or non-desirability of non-conventional marks (in particular non-visual marks). One might be compelled, in the current scenario, to argue that the European legislative community has by a sleight of hand avoided a policy decision. It has, instead, maintained a status-quo thereby precluding the use of ‘merit’ (read distinctiveness) in deciding the registrability of non-conventional marks and effectively discriminating against marks on account of their ‘nature’.

The path ahead

If a fair chance is to be given to all non-conventional marks, a scheme would have to be developed by which a trademark is represented according to its nature.

Whatever might be the solution to this deadlock, a re-look at the law by policy makers is quite certain in the near future. Until then, the legal and business community will have to wait with anticipated breath.

 

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[1] SMELL, SOUND, COLOUR AND SHAPE TRADE MARKS: AN UNHAPPY FLIRTATION by David I. Bainbridge. Citation: J.B.L. 2004, MAR, 219-246