A Look At Non-Conventional Trademarks
Traditionally, trademarks are consisted of words, logos or graphic designs applied to goods or packaging.
Usually, certain procedure is required, as well as compliance with the existing rules and legislation (e.g. Paris Convention, Madrid System) in order to register trademark. In case of non-conventional trademark such standardization initiatives are not normally applicable, since it requires specific legislation, which is either very limited or does not exist at all.
'A 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.'
Over the years, following trademark law improvements, influence of case law, and harmonization of law in the territory of the European Union, the requirement to represent trademark in graphical form (words, text or logo) slowly dwindles and loses its obligatory character, thereby providing the chance for those proprietors, who hope to register non-traditional trademark to express themselves in a different manner.
Among the list of non-traditional trademarks, currently the most discussed are the following:
Such trademarks frequently called as trade dress, due to the fact that the mark can be presented by a color or combination of colors applied to the goods or to their packaging. In case of services, the trademark can be constituted by visual appearance, for example, the menu of the restaurant.
This kind of trademark includes moving images, which can combine colors, sounds or parts of products design. For example, in certain countries, the motion of the “Lamborghini car door” has been given protection due to its unique movement as the door opens and closes.
This type of trademark may be a tree-dimensional representation of the product, the architectural design or signpost. For example, the Golden Arches of McDonalds qualify as shape trademark. Thus, such trademark is characterized by the shape of the label, rather than words.
It may be a piece of music, jingle or other sounds, such as reproduction of an everyday sound in unusual circumstance. (An example can be heard by clicking: 74629287 - Twentieth Century Fox - entertainment / motion picture films - drums + trumpets +strings)
Not all smells can qualify to be registered as a trademark. For example, the smell of perfume cannot be protected as the trademark because it is functional. Thus, only in case the smell has been specially added, the scent trademark can be registered. For example, “the strong smell of bitter beer”, for flights for darts was registered for trademark protection in the United Kingdom.
These trademarks are frequently referred to as gustatory marks. This kind of trademarks is permitted in limited number of jurisdictions, since it is often very difficult to distinguish between the natural flavor of the product and the recipe adopted by the manufacturer in order to distinguish it from competitors. The refuse to protect taste trademarks is also connected with the fact that recipes usually strongly guarded under the protection of trade secrets. The only example for taste trademark is the five-layered ice-cream cone (US, 1990), registered mainly because of its arrangement and its layers’ flavor and color. It is still debatable whether such trademark really granted because of the taste rather than the appearance.
Some goods are produced from special materials by certain technique, so product itself or its packaging may have particular sensation to touch. In some jurisdictions some bags of Louis Vuitonn obtained trademark protection for its “distinctive man-made textured pattern utilized as a surface feature” on its luxury line of luggage and related leather products.
Taking into account that current non-conventional trademarks recognized and offered for the application by OHIM, there are the following types: color per se mark (appearance trademark), 3D mark (shape trademark), and recently added sound trademark after the decision on Shield Mark BV v Joost Kist case, where ECJ concluded that sound signs qualify to the requirements of the Art 2 mentioned above.
Concerning Lithuanian legislation, Article 5, Paragraph 5 of the Lithuanian Trademark Law provides that a color, combinations of colors and arrangement of colors may constitute a mark. Article 5, Paragraph 4, of the Lithuanian Trademark Law provides that 3D forms (the shape of goods, their packaging or containers) may constitute a mark.
Providing a forecast on the future of non-conventional trademarks recognition in the EU, it is not very likely that such kinds as, for example, taste will obtain trademark protection since it is quite strongly guarded under other legal mechanisms. What is more, it is difficult to define how taste can act as a trademark when consumers only taste goods after purchase. Smells and sensory trademarks have very ambiguous perception by each person, so it also very doubtfully to get European recognition as the trademark soon, as far as it requires quite complicated process of proof to be distinctive enough and what is more important – huge scope of new unprecedented legislation.
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