Some See Rise In Non-Traditional Trademarks; National Registries Not Yet

By Catherine Saez
Trademark owners seeking to broaden their products’ scope of protection are increasingly turning to registering non-traditional trademarks, according to the International Trademark Association (INTA) and the World Intellectual Property Organization (WIPO). However, trademark offices do not show evidence of a significant rise in this type of registration request.

Non-traditional, or non-conventional, trademarks, usually describe a mark different from types familiar to consumers such as logos or names, and may be visible signs like shapes or non-visible signs like sounds or scents.

According to INTA, traditional marks usually consist of a word, logo or a combination of both while non-traditional trademarks can be based on appearance, such as colour or a combination of colours, shape such as a three-dimensional (3D) representation of the product itself, sound, such as a jingle, or a short extract from a composition, or even a reproduction of an everyday sound, as well as scents, tastes, or touch.

It is a generally accepted feature of trademark registration procedures worldwide that applications must contain a representation of the sign for which registration is sought, according to WIPO. In most if not all systems, a clear representation of the mark constitutes a filing requirement.

The representation requirement can make non-traditional trademark registrations difficult to file, as it must be proven that the mark is descriptive and might be limited by national or regional trademark legislation.

WIPO is working on the issue of non-traditional marks through the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications. “There is no doubt that there is a lot of interest for non-traditional marks” Marcus Hopperger, acting director of the WIPO Law and International Classifications Division, told Intellectual Property Watch.

However, of about 500,000 existing WIPO registrations, only 35 are sound marks, 526 are 3D marks and over 3,000 are marks that claim one or several colours as distinctive feature. Scent marks, taste marks and texture marks have been registered in some countries, according to WIPO, although “the registration of this type of mark remains exceptional,” Hopperger said. Non-traditional marks are an area of emerging interest in WIPO member states, according to the committee [pdf].

US software maker Microsoft registered the shape of the Xbox 360 video game, described by the company as having an “inhale effect,” with the lateral sides of the box curving inside, Russell Pangborn, Microsoft associate general counsel, said in an interview. The company also registered an animation called a “flare logo” in Windows Vista computer operating system, “the goal being to draw the user’s attention without disturbing him or her,” Russell said. “Non-traditional trademarks are one of the futures of trademark,” he said.

This view is shared by INTA. “Non-traditional trademarks are on the rise because new technology and new innovation are allowing brand owners to protect intellectual property never seen before,” said Matthew Schmidt, INTA communications manager.

“As more non-traditional marks emerge, so too will the attention of policymakers,” Schmidt said. “It’s safe to say that this is a developing trend and one that will be interesting to watch over the next several years.”

Colour and Shape Registrations Lead the Way

However, for Sharon Marsh, deputy commissioner for trademark examination policy at the United States Patent and Trademark Office, registration of non-traditional trademarks such as sounds, scents, texture, motion marks or holograms has not increased over the years. Colour and shape marks are more numerous, like the colour brown used by the United Parcel Service on uniforms and delivery trucks. The US trademark law is flexible enough to accommodate most non-traditional trademarks, and no policy change would be necessary to address a rise in non-traditional marks registrations, she said.

At the European Union Office for Harmonization in the Internal Market (OHIM) “non-traditional trademarks are not really increasing. They already existed when OHIM was created,” Alain Rassat of the trademarks and register department told Intellectual Property Watch. OHIM was created in 1994, according to its website.

EU trademark laws are stricter than those in the United States, and representation is a major issue, he said. Trademarks need to be represented graphically. “For us, smell trademarks are not registrable because they cannot be represented graphically,” he said. The same occurs with tactile marks. However, sound marks are accepted if they are musical notations, he said.

At the national level, a representative of the Irish national trademark office said Ireland has had no non-traditional mark registrations, but his English trademark office counterpart, Mike Foley, said that England has some. All European national trademark offices are represented on the European National Trade Mark Offices website.

According to Chinese lawyers attending INTA’s annual meeting in Berlin on 17-21 May, in China, colour and 3D trademarks are registrable, but sounds or smells are not.

INTA’s committee on non-traditional trademarks was created in January 2006. “The laws in Latin America vary from region to region, Laura Cruz, external relations manager for Latin America told Intellectual Property Watch. However, in the context of the Andean Community (Bolivia, Colombia, Ecuador, Peru and Venezuela) mutual IP rights system, known as “Decision 486,” and MERCOSUR (Southern Cone Common Market, the regional trade agreement between Argentina, Brazil, Uruguay and Paraguay), sound marks, three dimensional shapes, scents and colour combinations are registrable. Sound marks require a graphic representation of the sound and although combinations and arrangements of colours may be registered, a single colour is not registrable, she said.

The protection of motion and touch marks are not expressly protected in Central America but if these can be graphically represented, the registries will grant protection, said Cruz.

Disparities between national or regional trademark legislation may limit industry’s push for this new area of protection. But developing countries with only recent experience in trademark registration may have to amend their registration policies should this trend take shape. There are regions in Africa, Asia and Latin America with limited experience in non-traditional trademarks which are looking for opportunities to learn from the most advanced locations and their IP systems, Cruz said.

“Non-traditional marks are a relatively new area for brand owners,” said Schmidt, “and it stands to reason that brand owners in developing countries may begin with traditional trademarks and then move towards some of the non-traditional marks as they become more established.”

Catherine Saez may be reached at csaez@ip-watch.ch.