With the implementation of the Trade Mark Directive (89/104/EEC), the traditional concept of what was acceptable as a trade mark was thrown open to challenge. The explicit reference in Article 2 of the Directive to the shape of goods or their packaging was new, as was the implication that, because “any sign capable of being represented graphically” could constitute a trade mark, smells, sounds and even gestures and moving images could qualify for acceptance alongside more traditional trade marks comprising words, designs, letters and numerals.
This article looks at the latest decisions from Europe in relation to unconventional trade marks. Eliciting general principles in this area of law is not easy, but the general conclusion is that the ECJ and CFI are showing considerable reluctance to allow potentially perpetual monopolies to be granted over unconventional marks.
The question has arisen in a number of cases as to whether the ECJ should refuse certain types of unconventional trade marks because of public policy considerations. This was first raised in Philips v. Remington (Case C-299/99, 18 June 2002). In the special circumstances relating to shape marks under Article 3(1)(e), the ECJ held that the public interest was in preventing perpetual monopoly rights arising in relation to technical solutions. Marks which were attributable solely to a technical result would not be registrable.
More generally, in Linde, Windward and Rado Uhren (Joined Cases C-53/01 to C-55/01, 8 April 2003), the Court was faced with three marks which depicted the things themselves: a fork lift truck, a torch and a wristwatch. The Court held that in such cases, the marks might be refused under Article 3(1)(c) if they were considered descriptive. Such a consideration was in the public interest because descriptive meanings should be freely available to all. Further, in relation to colour marks, the Court has noted that there are a limited number of colours available and expressed its desire not to unduly restrict the availability of colours for use by other traders (Libertel Groep BV v. Benelux-Merkenbureau, Case C-104/01).
Despite these concerns, the ECJ has confirmed that shapes, colours, sounds and smells can qualify per se as trade marks provided that they can be represented graphically. Further, the Court has held that no stricter criteria apply to unconventional marks under Article 3(1)(b) of the Directive than to other marks.
The graphic representation
An application for a trade mark must include a graphic representation of the mark. The ECJ’s list of requirements for that graphic representation is as follows: it must be clear, precise, self-contained, easily accessible, intelligible, durable and objective (Sieckmann v. Deutsches Patent und Markenamt, Case C-273/00, 12 December 2002). The application must not allow for any element of subjectivity in the process of identifying and perceiving the sign. If the application does not comply with these requirements, it will not be able to fulfil its role as a registered trade mark, that is, as a guarantee of origin. The application will be refused under Article 2 of the Directive.
Such requirements have been familiar to applicants for UK trade marks since the decisions in Swizzles Matlow Ltd’s Application  RPC 879 and Tynant Spring Water Ltd’s Application  RPC 55. The first was for a three-dimensional sign described in the following terms:
“the trade mark consists of the circular compress tablet carrying a raised heart outline on both flat surfaces and containing within the heart outline on one side any one of several different words or phrases”
and the second was for a blue bottle described as having:
“… optical characteristic such that if the wall thickness is 3 mm the bottle has in air a dominant wave length of 472 to 474 nanometres, a purity of 44-48% and optical brightness of 28- 32%”.
Both applications were refused by the Trade Marks Registry. Both appeals to the Appointed Person were refused, in summary, because the applications lacked legal certainty.
Turning back to the ECJ case, it is apparent that, following Sieckmann an application for a smell or olfactory mark as the ECJ prefers to call them, seems doomed to failure. In the Sieckmann case, the German Patent Office had rejected an application made up of the following: (1) the chemical formula C6H5-CH = CHCOOCH3, methyl cinnamate; (2) description, being “balsamic fruity with a slight hint of cinnamon”; and (3) a sample. The ECJ held that:
the chemical formula was not sufficiently intelligible as it did not represent the odour but the substance and was not sufficiently clear and precise;
the description written in words was not sufficiently clear and precise;
- the deposit of an odour sample was not sufficient because it was not a graphic representation and was not sufficiently stable or durable; and
- the combination of all three of the above was insufficient to overcome the objection for the reasons previously given.
This decision obviously makes the CTM registrations for “the smell of vanilla” registered in a number of classes, including soaps and perfumes, and “the smell of fresh cut grass” registered in relation to tennis balls look somewhat vulnerable to revocation.
In relation to colour marks, such deficiencies in the graphic representation are resolved by either referring to a Pantone number or finding a sufficiently clear and concise verbal description. In the recent case of Libertel, where the application comprised a single colour mark, orange, for telecommunication goods and services, the Court held that a verbal description or internationally recognised identification code would satisfy the requirements under Article 2 of the Directive, but that a colour sample would not, because it could deteriorate with time.
As an aside, it is interesting to note that in the Libertel case, Advocate General Leger expressed the opinion that a colour in itself, without some defining shape or contour, could not constitute a mark under Article 2 of the Directive because it was intrinsically incapable of having distinctive character. The ECJ did not follow this opinion. Instead it held that a colour per se, that is one which is not spatially defined, was capable of constituting a trade mark provided that the requirements set out in Seickmann were followed. This has to be right since there are some colours, admittedly not very many, which have through use taken on secondary meanings. For example, there are not many who would not recognise a certain shade of purple as distinctive of Cadbury’s milk chocolate or green as distinctive of BP’s fuels.
The Sieckmann requirements also apply to other unconventional marks, such as sound marks (Shield Mark BV v. Joost Kist, Case C-238/01 – Advocate General’s opinion only available dated 3 April 2003). A musical score will fulfil the conditions for registration. However, a description of a sound in a foreign language, including onomatopoeia and a mere pattern of musical notes, will generally be insufficient. A good example of an unacceptable mark was one of the marks in this case i.e. “Kukelekuuuuuu” (the Dutch version of cock-a-doodle-doo).
As with all applications, in order to constitute a trade mark, an unconventional mark must be capable of distinguishing the goods or services of one trade from those of other traders. Its distinctiveness must be assessed by reference to, first the goods in respect of which registration is sought, and second, the perception of the relevant persons, namely the consumers of the goods who are reasonably well informed and reasonably observant and circumspect.
As stated above, the ECJ will not apply stricter criteria to unconventional marks under Article 3(1)(b) than to conventional marks (Linde). However, in a number of cases, the Court has been at pains to point out that it will be more difficult to establish distinctiveness in relation to unconventional marks because the average consumer is unaccustomed to perceiving such things as marks. This is, in practice, the major stumbling block for any application for an unconventional trade mark.
One of the first cases in which this point was made was Henkel KGaA v. OHIM and Procter & Gamble Co v. OHIM (Joined Cases T-335/99 to T-337/99; T-30/00; T-117/00 to T-121/00; T-128/00 and T-129/00, 19 September 2001). The CFI considered eleven applications, each comprising the shape of a dishwashing tablet, some being in layers of colour, others speckled and others having differently shaped indents. The Court held that the relevant section of the public easily recognised words as trade marks, but looked on shapes differently. In the result, the applications all comprised combinations of obvious features typical of the products concerned and could not act as indications of origin.
Similarly, the ECJ has noted that consumers are not in the habit of making assumptions about the origins of goods based on their colour. Therefore, the ECJ has concluded in Libertel that a single colour would not normally be capable of distinguishing the goods of a particular undertaking.
A combination of colours may, in contrast, be distinctive but this will depend on how the colours are presented and what they are applied to. If the colours are in a figurative arrangement or logo, then a combination of as few as two colours may be accepted. However, where the colours are to be applied to the goods themselves or their packaging, it is less likely that they will be viewed as a trade marks. For example, in Viking-Umwelttechnik GmbH v. OHIM (Case T-316/00, 25 September 2002), the application was for a combination of grey and green for lawn mowers and garden equipment. The CFI held that the application consisted of no more than two indistinct colours with no particular arrangement which the consumer would not regard as distinctive. Rather, the colours would simply be regarded as a feature of the finish of the goods in question. Similarly, in Andreas Stihl AG & Co. KG v. OHIM (Case T-234/01, 9 July 2003). The CFI upheld the decision refusing an application to register a combination of orange and grey for a range of machines and tools. Again, the Court held that the particular combination of colour would not be recognised as a sign because the distribution of the two components was not given systematically on the products and could be used in numerous different arrangements.
A further objection to unconventional trade marks lies in the fact that the level of attention given by the average consumer to, for example, the shapes of ordinary consumer products, is not high. Therefore, shape marks such as dishwashing tablets (Henkel), will not normally be considered inherently distinctive and, in the face of such a presumption, it will be very difficult to prove that they have acquired distinctiveness through use. This presumption also proved fatal in relation to brown cigar-shaped chocolates and gold ingot-shaped chocolates (Axion v. OHIM, Cases T-324/01 and T-110/02, 30 April 2003). In refusing both applications, the CFI held that the marks did not differ substantially from certain basic shapes commonly used in the trade. Therefore, the average consumer who only pays fleeting attention to the shape and colour of chocolate products, would not perceive the marks as distinctive.
However, such preconceived ideas about the way in which the average consumer views a shape are not always insurmountable. In DaimlerChrysler Corp v. OHIM (Case T-128/01, 6 March 2003), the applicant applied to register a vehicle grille for vehicles and parts therefore. The CFI annulled the decision of OHIM which had refused the application under Article 7(1)(b) of the Regulation. Grilles were an essential part of the look of vehicles and a means of differentiating between models. The fact that they also served a functional purpose had no bearing on the question of distinctiveness. The CFI found this shape to be unusual and one which could not be regarded as altogether commonplace. This was sufficient to overcome the minimum degree of distinctiveness required. This case is one exception in a growing list of unconventional trade marks which have been refused registration because they lack distinctiveness.
The question of how to prove sufficient distinctiveness remains. As Mr Justice Jacob pointed out in Société de Produits Nestlé SA v. Unilever plc ( EWHC 2709 (Ch), 18 December 2002), a trader is rarely brave enough to use a shape mark (or indeed any other unconventional trade mark) without another distinguishing name or names. In this case, the application, being the shape of Viennetta ice cream, was always sold under both the marks “Wall’s” and “Viennetta”. How then could it be shown that the shape had become distinctive as opposed to the name of the manufacturer or the name of the product? Certainly, in Bongrain v. Registrar of Trade Marks ( EWHC 531 (Ch), 21 March 2003), Mr Justice Pumfrey held that this was fatal to the application to register the shape of a cheese which was always sold with the name “Saint Albray” written on it.
The ECJ has answered this point in limited fashion. If a trader has been the only supplier of particular goods to the market, extensive use of a sign which consists of the shape of those goods might be sufficient to give the sign a distinctive character under Article 3(3) in circumstances where, as a result of that use, a substantial proportion of the relevant class of persons associated that shape with that trader and no other (Philips v. Remington). The ECJ stated that it is for the national courts to decide whether the identification by the relevant class of persons of the product as originating from the particular undertaking resulted from use of the mark as a trade mark. As Mr Justice Jacob pointed out in the Viennetta case, there is considerable difference between recognising a shape and thinking of it as a distinguishing mark. He remained unconvinced that the Viennetta ice cream shape acted as a trade mark, despite 67% of those questioned identifying the shape as a Wall’s product.
In the end, each case will turn on its own facts. But the point remains that, in many cases, significant evidence of use will be required to persuade courts that an unconventional mark is distinctive of the applicant’s goods.
Specific rules for shape marks
In addition to the above, there are three specific exclusions relating to shape marks. Article 3(1)(e) of the Directive excludes from registration signs which consist exclusively of:
- the shape which results from the nature of the goods themselves;
- the shape of goods which is necessary to obtain a technical result, or
- the shape which gives substantial value to the goods.
It is important to note that the exclusions in Article 3(1)(e) cannot be overcome by use under Article 3(3). Thus, Article 3(1)(e) can be seen, in effect, as a preliminary obstacle to shape marks (Linde) which they need to overcome before considerations of distinctiveness or descriptiveness are brought into play.
Where a mark comprises the shape of the product itself, it may be argued that it comprises nothing more than the shape which results from the nature of the goods themselves (the first exception). The question is whether this exclusion is restricted to naturally occurring shapes, rather than artificially created shapes. As a matter of language, it would seem not. The meaning of the word “nature” in English can mean a fundamental quality, identity or essential character. Similarly, the French “les signes constitués exclusivement: par la forme impose par la nature même du produit”, does not necessarily infer any requirement that the exclusion is restricted to naturally occurring shapes. However, none of the shape marks considered by the ECJ or CFI have foundered on this particular exception. This might be because Advocate General Colomer is generally believed to be correct when he expressed the opinion in Linde that this exception was indeed restricted to naturally occurring shapes.
We have more guidance on the meaning of the second exclusion - shapes which are necessary to obtain a technical result. The ECJ held in Philips v. Remington that where the essential functional characteristics of the shape of a product were attributable solely to the technical result, registration of a sign consisting of that shape was precluded. Thus, Philips’ mark which depicted the face of its three‑headed rotary shaver was not registrable. This was so, even in the face of evidence showing that the same technical result could be achieved by other shapes. The Court stated that the policy reason behind this exclusion was to prevent perpetual monopolies in technical solutions. Applicants should not seek trade mark protection for such things, but rather seek design or patent protection.
Finally, a shape mark can be rejected if it comprises exclusively a shape which gives substantial value to the goods, for example, aesthetically shaped goods. There is no decision at the level of the ECJ or CFI in relation to this exclusion. It is arguable that if the mark, being the shape of the product is intended by the manufacturer to look attractive to the eye of the purchaser, again, policy considerations should apply to exclude it from protection. Protection should instead be sought by way of a registered or unregistered design or under copyright, as opposed to trade mark law.
Due to be published in the September 2003 edition of WIPR.