Unconventional Trade Marks
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Unconventional Trade Marks
So you want to register a colour as a trade mark?
It is very difficult to do so.
Following the case of Libertel (c104/01) the European Court of
Justice decided that to be represented graphically, colour marks must
be presented in a way that is “clear, precise, self contained, easily
accessible, durable and objective.
The court determined that providing a sample of the colour on
paper is not sufficient by itself to satisfy the requirement on
graphical representation of the sign.
To satisfy the graphical representation requirement, it is
possible to use an international colour identification system, like
Pantone, RAL and Focoltone. These provide a code that represents the
colour and is precise enough for anyone using the code to recognise the
Smell Trade Marks
In Sieckman C104/01 the ECJ ruled that a smell trade mark does
not satisfy the requirements of graphical representation if it is
presented in the form of chemical formula, by description in words, or
deposit of the odour. An olfactory mark is in principle, capable of
registration but in practice very difficult to represent.
Shield C283/01 the European court of justice confirmed that
sounds “must be capable of being regarded as trade marks provided that
they are capable of distinguishing goods and services of one
undertaking from those of other undertakings and are capable of being
Sound marks, like smell marks, are not in themselves capable
of being perceived visually, but they must nevertheless fulfil the
requirements of being represented graphically on the application form.
The acceptability of a sound mark is that it like word and
other forms of trade mark must be a distinctive sign. The average
consumer must be able to perceive the sign as meaning that the goods
and services are exclusively associated with one undertaking.
In principle, there is nothing to prohibit movement
marks from being trade mark, provided they can be used to
distinguish the goods or services from those of other undertakings and
are capable of being represented graphically.
To be represented graphically a short film may be represented
as the stills from each frame that will make up the mark when played
one after another. The application should also include the fact the
mark is a moving image, what the image depicts, how the images are
involved ie the movement and sequence of the images.
Holograms may be the future of trade marks but for now they
are still science fiction. For a hologram to meet the requirements of
graphical representation, it is necessary for the application form to
contain representations of each of the various views depicted in the
hologram. This will ensure that third parties will be able to see all
material features of the mark.
As I have shown above, to register a non traditional trade
mark is very difficult and in most cases will result in rejection
either due to the fact it is not capable of being represented
graphically or because it is not distinctive enough to separate the
goods from one undertaking to another.
Written by Thomas Mould
About the Author
Solicitors offer services and advice for litigation,
commercial contracts, Intellectual Property and IT legal agreements. We
are experts in commercial law with a heavy emphasis on Intellectual
Property, Internet and e-commerce law. Lawdit is a member of the
International Trademark Association, the Solicitors' Association of
Higher Court Advocates and we are the appointed Solicitors to the
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Article Published/Sorted/Amended on Scopulus 2015-01-27 09:02:23 in Legal Articles