What are non-traditional trade marks and does your business need any?

When considering your business’ your trade mark portfolio, you may be familiar with your main brand names and logos. What you may not be aware of are other types of registrable trade marks that your business may own and use that do not fit the conventional description. For example, you may use an advertising jingle that consists of a particular sound or noise, or your products may have an identifying colour, smell, shape, taste, texture or pattern. You may also utilise graphics or animation that incorporates a particular motion, gesture, position or hologram.

Some current examples of non-conventional trade marks in use in industry are the shape of Pepsi’s coca-cola bottle, a 3D mark for the shape of a Toblerone chocolate bar, the red-soled heels of Christian Louboutin shoes and, in the USA, even the sound of Darth Vader breathing.

In this article, Head of Trade Marks, Ben Evans, explains what non-traditional trade marks are, how to register a non-traditional trade mark and the expected cost of registering a non-traditional trade mark.

What are the benefits of registering a non traditional trade mark?

With changes in technology it is becoming more and more common for businesses to use a wide array of diverse and creative ‘signature’ branding techniques to make them stand out in the market and trade mark law has needed to evolve to protect these. Being able to register a wide range of non-conventional trade marks as part of your branding strategy will allow you to better protect your brand’s image and stay ahead of competitors.

What are the challenges in registering non traditional trade marks?

It is still the case that in order to be registered, a non-traditional trade mark must be distinctive and capable of distinguishing a product or brand from that of a competitor. As with all trade marks on the Register, it must be possible to represent the mark in a manner which enables the authorities and the public to determine the clear and precise subject matter of the protection.

Both of these factors have proven to be more difficult to satisfy for non-traditional marks but trade mark law is constantly evolving and developing to permit a wider array of innovative recordal and representation techniques.

Capable of being represented in a clear, precise way

This criteria is necessary so that an ordinary person viewing the Register can understand what the mark consists of and the exact scope of its protection.

Sound marks can now be represented at the UKIPO and EUIPO by an audio file or an accurate visual representation such as musical notation consisting of a stave divided into bars and depicting a clef and all the notes involved in the melody.

Video and audiovisual files can also be uploaded to demonstrate multi-media trade marks such as motion, gestures and sounds. Or, you can file a series of sequential still images showing a particular movement or change of position or colour of an element such as a word, image or character. 

For colour marks, you must include a recognised colour referencing system in the trade mark description, such as a ‘Pantone’ number and a description of how the colour is to be applied to the goods. If the mark consists of more than one colour, you must show or specify exactly how the colours are to be arranged in a predetermined and uniform way.

For shape marks, you will need to show the entirety of the mark so you should include different views or perspectives in the application.

Smell marks are the most difficult to represent in a clear and precise manner. Whilst some countries accept a simple description of the scent, in the past in the UKIPO and at the EUIPO, it was held that the chemical formula and a description and/or a sample of the smell would not constitute adequate representation. Advances in scent recognition research and technology may change this in the future and make smell marks more common.

Particular care must be taken when claiming priority when filing a subsequent mark or when filing an international mark based on an unconventional ‘base’ mark, as the same type of representation must be used or if not, the two representations must contain all the same elements, such as notes or sounds, in order to be considered identical.

Distinctiveness and capable of distinguishing

Even if your non-conventional mark can be accurately represented on the Register, it must also be deemed to be distinctive enough to function as a trade mark. This has often proven to be quite difficult in respect of particular types of marks such as single colours or short combinations of musical notes.

The aspects to be protected must not be perceived as a functional element of the goods and services or a common or banal feature in the industry in question. If a sound is produced by or connected to the goods, it will be perceived by the consumer merely as a functional attribute, and the sound mark will be considered non-distinctive.

For example, the sound of a can opening would be perceived as purely technical and functional for fizzy drinks as would the sound of bubbles fizzing as it is a predictable and common sound in the beverage industry. A two tone sound such as the ‘ding-dong’ of a doorbell or a banal and commonplace ringing sound are likely to be considered too banal to be remembered by the public as a particular brand indicator.

Three-dimensional shape marks must depart significantly from the shape that is expected by the consumer and from the norm or customs of the sector in order to be distinctive. So functional shapes or features of a shape such as the shape of a twisted sweet wrapper would not be accepted.

Single colours alone are not usually considered by the consumer to indicate brand origin unless they are exceptionally unusual or striking in relation to the goods or services in question. Combinations of colours are acceptable if they fulfil the other criteria and as long as one of the colours is not the commonplace or natural colour for the product. The colour combination must not be purely technically functional or common in the trade or likely to be perceived merely as decoration rather than a brand indicator.

Where a mark is not considered distinctive enough in itself, the option remains to submit evidence of ‘acquired distinctiveness’ of the mark. This is possible where you have widely used the mark in question already so that a ‘significant proportion of the relevant public’ has, due to the use made of the mark on the market, come to see it as identifying the goods and services claimed as originating from your business only. The relevant consumer will be the customer or prospective customer of your goods/services in the territory in which you are seeking registration. So, for the UK, you would need to demonstrate use throughout the whole of the UK and for an EU trade mark you would need to demonstrate use throughout a substantial part of the European Union or those parts of the EU where the mark is descriptive or non-distinctive due to the language(s) understood in those countries.

This can be a costly and time consuming process and will only assist if you have already used your mark for a long enough period of time and extensively enough for it to stand out in your particular market.

Trade mark searches for non traditional trade marks

The process for conducing clearance searches for non-traditional marks is essentially the same as that for traditional word or image marks. Currently, the UK Register only offers search criteria based on ‘keyword', ‘phrase' or ‘image’, ‘trade mark owner’ or ‘trade mark number’. The US Registry offers a structured search option that allows you to search by mark description and a particular mark drawing search code. The EUIPO has a drop down search criteria box for the type of mark in question that includes ‘3D shape’, ‘colour’, ‘hologram’, ‘motion’, ‘multi-media’, ‘olfactory’ ‘pattern’, ‘position’ and ‘sound’.

You may need to be more creative in conducting searches in respect of non-conventional marks. For example, if you have a sound mark, you may want to search for word marks that incorporate the words that feature in your sound mark. A trade mark lawyer or attorney will be able to provide assistance in tailoring searches to fit the mark in question as well as advising you on any risks involved in using your mark in business and meeting the registration requirements.

What is the process for registering a non traditional trade mark?

The process is the same for registering a non traditional trade mark to that for a more usual word or image mark. You are strongly advised to seek expert advice before filling the application in order to ensure that you represent the mark in a way that is acceptable to the Registry.

What is the cost of registering a non traditional trade mark?

The UK IPO accepts applications for non conventional trade marks in the same way as word or image marks. You can file the application online or by post. The application for will ask whether your mark consists of a word, image, 3-dimensional shape, colour only, hologram, sound, motion, pattern or multimedia. You can then upload a file in the correct format (up to 20MB for MP4 format, up to 4MB for JPG or JFIF format etc) containing the mark representation to the online application form or include a hard copy along with a postal application.

The cost is again the same as for other usual trade mark applications and will comprise the IPO Registry fee and your IP lawyer’s costs for preparing and submitting the application for you.

Enforcement of a non traditional trade mark

There are potential challenges in enforcing non traditional trade marks when compared to traditional trade marks. Of course, if someone directly copied your mark and attempted to use or register the exact same sound, colour combination or shape for the same goods or services for example, you would be likely to stand good prospects of challenging them at the tribunal or in the court for infringement or passing off.

Where a third party has incorporated some of your non-conventional mark into their own or is using a similar sound, shape or pattern for similar goods or, for example, the position is less clear cut.

For example, the EUIPO Registry Guidance states that:

• ‘Sound marks can always be aurally compared to other sound marks and to multimedia marks. Sound marks can be aurally compared to other types of marks provided that those marks consist of or contain a verbal element…A conceptual comparison between two sound marks and between sound marks and other types of mark can be made in cases where a concept (either in the verbal element or in the true-to-life sound) can be identified.’
  
  So, a sound mark may be considered similar to a word mark where the coinciding verbal element can be pronounced the same way as it is rendered in the sound mark. A melody may be considered the same or very similar even if a different instrument, tempo or rhythm is employed.
• ‘When visually comparing two motion marks or a motion mark with another type of mark, the coincidence in, or similarity between, the elements present in the trade marks (the verbal and/or figurative elements, and the movement or transformation of those elements) has to be considered…’
  
  So, the existence of the same distinctive word or verbal element in two motion marks may render the marks visually similar but the mere coincidence of a banal motion/movement in itself will not lead to visual similarity.
• ‘With hologram marks, an identical or similar holographic effect in itself will not, in principle, lead to a finding of visual similarity, unless similarity can be found in the verbal or figurative elements of the signs under comparison.’
  
  So, a hologram mark can be found similar to another mark that consists of or contains a similar word or image.

The more components that the non-conventional mark comprises, the more difficult it may be to assess whether there is a likelihood of confusion. The general principles remain the same in that in assessing similarity, the significance of the reproduction of individual features will depend on the distinctiveness and relative dominance of such features in the mark as a whole. A further hurdle faced by business’ trying to prove infringement of their non-conventional marks is that the third party may try to assert that the common aspects are usual in the trade or are simply functional in nature.

Legal advice should always be sought in cases involving non-conventional trade marks as these cases are likely to be complex and turn on specific points of law.

Summary

The threshold for registering and enforcing non-conventional trade marks is higher than that for conventional word and image marks and it is likely to take more time and money to protect this type of IP.

The law is developing in this area and, depending on your field of business and what your competitors are doing, it may well be worthwhile to review your portfolio and IP strategy to see if you would benefit from applying to register any aspects of your media output and distinctive branding that you previously did not think were protectable.