TheRegistrabilityofSmellsandColoursasMarks

17 January 2003

Susan Storor

Following the First Council Directive to approximate the laws of the Member States relating to trade marks[1], practices have evolved in the various European trade mark registries to allow the registration of non-traditional marks in certain circumstances. Despite this, a recent judgment of the European Court of Justice has effectively ruled against the registrability of olfactory signs. Also, a recent opinion of the Advocate General considers colour per se unregistrable as a trade mark.

Olfactory signs

The European Court of Justice considered the registrability of olfactory marks in its judgment in Sieckmann[2]. Mr Sieckmann applied to register the following mark in the German Patent and Trade Mark Office in respect of various services falling within classes 35, 41 and 42 of the Nice Classification:

"Trade mark protection is sought for the olfactory mark deposited … of the pure chemical substance methyl cinnamate (= cinnamic acid methyl ester), whose structural formula is set out below. Samples of this olfactory mark can also be obtained via local laboratories listed in the Gelbe Seitin(Yellow Pages) of Deutsche Telekom AG…

C6H5-CH = CHCOOCH3"

As indicated, Mr Siekmann submitted with his application a sample in a container of the scent applied for and stated that it was usually described as "balsamically fruity with a slight hint of cinnamon". During the course of prosecution of the application, Mr Sieckmann amended the description of the mark to include a consent to inspection of the deposited sample.

The German Patent and Trade Mark Office refused the application. Mr Sieckmann appealed to the Federal Patents Court who referred two questions to the ECJ for a preliminary ruling. The first question related to Article 2 of the Directive and the interpretation of the requirement that a sign be "capable of being represented graphically": whether this requirement is only fulfilled by signs which can be reproduced "directly in their visible form" or whether it also extends to signs, such as smells or sounds, "which cannot be perceived visually per se but can be reproduced indirectly using certain aids". If the ECJ agreed with the latter wider interpretation, the German court then proceeded to ask whether the requirement of graphic representation would be satisfied in respect of an olfactory mark by either: a chemical formula, a description of the smell, a deposit of a sample or a combination of these elements.

The ECJ noted that the wording of the Directive, whilst not expressly mentioning, did not expressly exclude as trade marks signs not in themselves capable of being perceived visually. On that basis the Court held that such signs may constitute trade marks provided that they can be represented graphically, particularly by means of images, lines or characters. The representation must also be "clear, precise, self-contained, easily accessible, intelligible, durable and objective". These latter requirements were motivated by perceived public interest in the ability to ascertain with ease and certainty of the extent of a registered trade mark by inspection of the public register.

In turning to the second question, however, the ECJ acknowledged that the graphic representation of odours in accordance with these requirements poses considerable problems.

The Court rejected representation of an olfactory sign by way of a chemical formula as it is not sufficiently intelligible: few people would recognise in such a formula the odour in question. Further, the chemical formula does not represent the odour of a substance but the substance itself. Finally, a chemical formula is not sufficiently clear or precise because it does not make it possible to perceive one particular odour with certainty.

The Court also rejected representation by way of description of the smell as, although graphic, it is not sufficiently clear, precise or objective. A deposit of a sample was also not acceptable as it was not a graphic representation and was neither stable nor durable.

The Court considered that if none of these representations of an olfactory sign are capable in themselves of fulfilling the relevant requirements as to registrability, then a combination of them will not do so.

Colour signs

The Advocate General's opinion in Libertel Groep BV[3] considered the registrability of a colour per se, that is, without shape or outline. Libertel applied to the Benelux trade mark office to register the colour orange in respect of telecommunication-related goods and services in classes 9, 35 and 38 of the Nice Classification. In its application, Libertel represented the sign by inserting a sample of the relevant shade of orange. It also described the colour of the sign as "orange".

The Benelux trade mark office refused the application. Libertel unsuccessfully appealed to the Hague Court and further appealed to The Netherlands High Court who referred a number of questions to the ECJ.

The Advocate General opined that, in interpreting Article 2 of the Directive, a colour per se, without shape or outline, cannot constitute a sign capable of graphic representation or a sign capable of distinguishing the products and services of one undertaking from those of other undertakings.

The AG's starting point was a rather esoteric and discursive consideration of the notion of colour (for example, "colour does not constitute a pre-existing objective reality") in the light of which he considered it convenient to look at the requirements of Article 2. In the course of this, the AG noted that colour does not exist of itself, but always in relation to an object so that our experience of colour cannot be separated from an object in which it is manifest.

As in Sieckmann, the AG considered that not every graphic representation is sufficient for a sign to be registrable. The representation must be clear and precise so that a third party can know without any possible doubt what is the monopoly claimed. It must also be intelligible to those who wish to consult the register, that is, it must not necessitate exaggerated efforts in order to determine the sign to be used by the applicant. In the AG's opinion, a colour per se does not fulfil these conditions: it does not allow one to determine what will be the sign used by the applicant to distinguish their goods and services. The AG considered that, as colour must always be attributed to an object, one cannot determine from the registration of a colour per se, how that colour will appear in relation to a product or service. Therefore, third parties cannot determine whether, and if so how, they may use that or a similar colour in respect of the same or similar product or service.

The AG considered that a colour per se could even less fulfil the second requirement of Article 2 that a trade mark must be capable of distinguishing the products and services of one undertaking from those of other undertakings.

He considered colours per se intrinsically incapable of having a distinctive character for two reasons: firstly, appreciation of whether a sign is capable of having a distinctive character, implies knowledge of precisely what the sign is (which, following the above reasoning, colour per se does not allow). Secondly, a colour per se is incapable of fulfilling the function of indicating the origin of goods or services as consumers are only capable of determining origin when a colour is applied to a design or an object: if the design or object is missing, consumers will no longer be able to recognise with certainty the origin of the product or services concerned. Therefore, a mark is not constituted by a colour in itself, but by that colour associated with another element or applied to an object.

The AG then went on to consider the harm that could arise if undertakings were to obtain monopolies of colours per se. He considered that trade mark law could equally justify that colours in themselves cannot be given to the exclusive use of certain economic entities but should be left for the use of everyone.

However, many colour mark registrations are not described per se but in relation to their application to objects. The AG expressly recognised the legitimacy of such registrations. For example, he expressly approved of BP's UK trade mark registration covering goods and services offered in petrol stations, for the colour green as applied to the exterior surfaces of premises or buildings conforming to plans attached to the application for registration.

Implications

As a result of the ECJ judgment in Sieckmann, it would appear for the time-being that olfactory signs are not capable of registration as trade marks in the Community and that any registrations for such marks as exist must be invalid. Such marks as have been registered to date tend to be graphically represented as simple descriptions of the smell claimed. For example, CTM registration no. 428870 is described as "the smell of fresh cut grass applied to the product" being "tennis balls". The ECJ made it clear that any such description of a smell is insufficiently clear, precise or objective to identify the sign to be registrable.

Most colour mark registrations are described by virtue of their mode of application to packaging or other objects. For example, Ty Nant has a UK registration for its bottled water for the colour cobalt-blue as applied to bottles as shown in the form of application. However, rarely some colours per se have proceeded to registration. For example, Kraft has a registered Community Trade Mark for the colour lilac/purple in respect of chocolate. The colour is represented in the same manner as Libertel applied for the colour orange. It will be interesting to see whether the ECJ will adopt the AG's opinion in Libertel. If it does so, such marks will no longer be registrable and those that exist will be invalid.

Also published in the February 2003 issue of WIPR.



[1] (89/104/EEC)

[2] Case C-273/00, 12 December 2002

[3] Case C-104/01, 12 November 2002