Guide to non-traditional trademarks in the EU and the US: definitions, laws, and examples

There is a growing use of new branding strategies that utilize non-traditional marks, in particular, those directed to various non-visual senses (sound, scent, taste or touch) of human beings. Non-traditional trademarks have featured prominently in the news in recent years due to the coverage given to some of the internationally well-known companies, such as Coca-cola, Toblerone, and Tiffany and Co., which have experienced great successes and failures in relation to the registration of such trademarks. Should other businesses follow this trend?

By

Igor Demcak

What is a non-traditional trademark?

Trademarks are used to distinguish the goods and services of one brand from other brands. The ability to determine the goods or services from those of other traders is the main purpose of any trademark. In addition, it aims to provide a unique sign that consumers will associate with a given brand, its characteristics, and its quality. Conventional forms of trademarks include:

  • Numerals;

  • Words;

  • Logos;

  • Symbols; 

  • Or combinations of one or more of these elements.

Besides these traditional kinds trademarks, there is a range of other forms of trademarks, such as:

  • Colour;

  • Sound;

  • Shape of goods;

  • Smell;

  • Touch/texture;

  • and hologram marks.

These unconventional forms of trademark help protect specific features of products whose visual appearance has attained a distinct uniqueness and popularity, so much so that the public at large may recognize the product because of these features. It also provides the owner with a clear commercial advantage in manufacturing and selling those products and/or packaging.

Regulation on non-traditional trademarks in the EU and the US

Before the EU trademark reform in 2015, the Council Regulation (EC) No. 207/2009 (the ‘CTMR’) provided that “[a] Community trade mark may consist of any signs capable of being represented graphically”. The Court of Justice of the European Union (CJEU) noted that the Council Directive on the Community Trade Mark Regulation (CTMR) allows any signs, including those not perceptible visually, to be registered as a trade mark as long as it is capable of graphic representation and can distinguish the goods or services of one undertaking from another. This graphic representation must meet certain criteria, such as being clear, precise, self-contained, easily accessible, intelligible, durable, and objective. In practice, visual signs are more likely to meet these requirements and, thus, are more likely to be registered.

The European Union Trade Mark Regulation (EUTMR) No. 2015/2424, which came into force on 23 March 2016 and is now codified as 2017/10012, has eliminated the requirement for a graphic representation of a trademark on the Register of European Union trade marks (the ‘Register’). Now, a trademark may be represented on the Register in any manner as long as it can be identified by the European Union Intellectual Property Office (the ‘EUIPO’) and the public. Therefore, this amendment allows for a wider variety of signs to be registered as EU trademarks.

The US law does not require a graphic representation for all types of trademark registrations on the federal level, which is different from the regulations that were previously in place under EU law prior to reform. Under The United States Patent and Trademark Office (the ‘USPTO’) guidelines, an applicant of a non-traditional trademark application must submit a clear drawing with the original application in order to receive a filing date in any application for registration of a trademark. The drawing is used to reproduce the mark in the Trademark Official Gazette and on the registration certificate. The registration procedure for non-visual marks was accommodated by the USPTO, establishing the classification “a mark drawing code 6”, which is used for sounds, scents and other non-visual marks. The existence of this drawing code demonstrates that, under U.S. law, formal requirements allow for the protection of non-traditional signs, including non-visual ones. Apart from the formal requirements, each mark must comply with the substantive prerequisites: it (i) has to have a distinctive character; (ii) has to be in use; and (iii) must overcome the bars to protection established by the Trademark Act, the most significant of which in the context of non-traditional marks is the functionality.

Examples of non-traditional trademarks

There are multiple examples of registered unconventional trademarks by well-known companies.

  • Successfully registered shape trademarks include the Manolo Blahnik shoe shape, the Longchamp Le Pilage bag,  the packaging of a Toblerone chocolate bar, the 4-bar shape of the KitKat chocolate, and so on.

  •  Some widely-known examples of registered sound trademarks include Audi 'heartbeat' sound logo, 'Intel Inside' musical jingle, Samsung ringtone, Renault 'Passion for life,' Nissan 'Innovation that excites' sonic logo, Netlfix sound logo, Nokia tune, BMW sound logos, and so on. 

  • When it comes to registered color trademarks, some prominent examples are T-Mobile's Magenta, Lilac of Milka-chocolate, Blue of Tiffany and Co., Orange of Fiskars scissors, Orange in Reese's, Brown of United Parcel Service, and so on.

Benefits and challenges of non-traditional trademarks

The process of registering these trademarks can be significantly more difficult, as they may need to be supported by evidence of use to achieve registration. You must show that the public has come to identify certain product aspects with your particular goods or services. While there are cases of successfully registered shape and sound trademarks, the probability of registering the touch/texture and hologram trademarks seems to be very low or negligible as such trademarks may not be graphically represented because touch/texture trademarks at present can be recognized by only human touch. 

Still, the registration of non-traditional marks can provide a business with a useful advantage in the protection of important aspects of how it promotes its goods and services. Further gains of getting such a trademark registered include the ability to restrict or stop your competitors from using a product/service with confusingly similar features, differentiate your product or brand, and gain an exceptional reputation. Experienced trademark lawyers can help you navigate the process of registration for non-traditional trademarks to protect essential assets of your brand. To learn more about trademark options for shapes, colors, sounds, and other non-traditional assets, contact an experienced trademark attorney today.

Igor Demcak
Igor Demcak

Trademark Attorney

Founder & CEO of Trama

7 year experience in IP protection

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