‘Non-traditional’ trade marks comprise a number of different types of trade marks which do not belong to the conventional categories of words, numerals, pictorial and logo marks, or a combination of these marks, and yet still serve the essential purpose of a trade mark by uniquely identifying products or services as being from a particular undertaking. As such, non-traditional trade marks comprise marks based upon sound, texture, three-dimensional shape, taste and smell.
The acceptance of non-traditional trade marks in Asia has increased in recent years as a result of legislative changes in many jurisdictions aimed at increasing competition in the marketplace. Also, international treaties have forced many countries which did not previously cater for non-traditional trade marks to alter their regulations to keep in line. For example, the introduction of the Trade Related Aspects of Intellectual Property Rights (TRIPS) provisions as part of the General Agreement on Tariffs and Trade (GATT) has meant that the intellectual property offices of all the member states of the World Trade Organisation must now accept, amongst others, applications for marks which are a combinations of colors, although each member state has the right to make registrability dependent upon acquired distinctiveness, and additionally require that signs be visually perceptible. In practice this last requirement has been taken by many Asian countries to mean that colour marks devoid of any delimiting factor, such ascolours comprising a pattern or shape, or a single colour itself in respect of any goods or services, may be refused registration.
At the same time a drawback on greater adoption of non-traditional trade mark filing strategies in Asia has been inconsistency amongst Asian nations in their requirements and provisions for the accurate recordal and reproduction of non-traditional trade marks in their national registers and publications. An example is the clear need for the official publications in which newly accepted marks are advertised to be printed in colour as otherwise monochrome representations of colour marks make it difficult for third parties to obtain an accurate measure of legal certainty. In one example the monochrome official trade mark gazette of an Asian country provides accompanying descriptions to advertisements of colour marks with the phrase “designating colours”, the specific colours themselves not being disclosed. A possible solution would be the provision of online electronic gazettes, but the quality of searching facilities available on state intellectual property websites varies tremendously with many nations not offering any viewing facilities at all.
In general, it is the norm amongst Asian countries for trade mark examination to exclude from registrability smell marks, taste marks and texture marks. Furthermore, the legal requirement in many Asian nations for a graphical representation of the mark applied-for presents an additional legislative hurdle that has yet to be dealt with satisfactorily in practice before non-traditional marks are ready for mass adoption. In this respect, the requirement for graphical representation appears to be more of a legacy of traditional trade marks, and one which many Western nations are grappling with too. Sound marks are also generally not allowed amongst Asian countries – with a few notable exceptions – whereas it is generally the case that three-dimensional marks and colour marks are accepted although the registrability criteria for these varies across the Region.
The Hong Kong Trade Marks Ordinance 2003 defines a trade mark as any graphical sign which is capable of distinguishing the goods or services of one undertaking from those of another. Furthermore, explicit provision is made for a trade mark to comprise colours, sounds, smells, the shape of goods or their packaging, or any combination thereof. Since introduction of the new Ordinance the Registry has been accepting applications for these non-traditional trade marks with many three-dimensional marks and marks claiming colours having progressed to registration since. Applications for colour marks consisting purely of the colour(s) and devoid of any additional delimiting features such as colours claimed as an element of a mark, whilst not excluded from registration can expect to receive a difficult prosecution with the onus on the applicant to demonstrate acquired distinctiveness.
Three-dimensional marks are accepted as well as any visual sign capable of distinguishing the goods or services of an undertaking from another. In recent cases, applications for a series of trade marks representing tobacco product lighters were refused wherein the Examiner cited that the marks are generic containers for the goods claimed. Similarly, applications for drinks containers which were considered to be shapes commonly seen for containers of soft drinks were also refused registration on grounds of indistinctiveness. However, many three-dimensional marks which were judged to be novel, unusual or distinctive have been allowed. In all cases the pertinent consideration for the Chinese State IP Office is whether the three-dimensional mark consists solely of the shape which results from the nature of the goods themselves, a shape necessary to obtain a technical result or whether a shape which gives a ‘substantial value’ to the goods – presumed to mean a mark which provides a decorative or functional value to the goods or services claimed.
Sound and smell marks are specifically excluded from registration, and whilst multiple colour marks are frequently accepted, single colour marks can expect to face an uphill struggle to registration. In recent cases a mark consisting of a series of parallel stripes of red, blue and green colour respectively for goods in class 9 was accepted whereas an application for a mark consisting of the two colours black and red also in class 9 was refused for lacking distinctiveness and not being readily distinguishable. In the absence of appropriate evidence of distinctiveness it would seem that the chances of having a colour mark application being accepted in China depend heavily upon the number of colours claimed (three or above appearing to be preferred) and whether the colours claimed are basic colours.
Under Japanese law three-dimensional marks are allowed as long as they posses a character that does not merely arise from the function or intended use, or the mark possesses a decorative effect. Colour marks are also allowed, but only in conjunction with delimiting elements such as colour claimed as part of a figure, character, three-dimensional shape etc. Colour marks consisting of just a colour or colour(s) and not further delimited are not registrable. Sound and smell marks are not registrable.
Taiwan passed legislation in July 2004 which provided, amongst others, guidelines on the registration of three-dimensional, colour and sound marks. Three-dimensional marks must be distinctive and non-functional to be registrable. The guidelines state five types of three-dimensional shapes for which registration is available: three-dimensional products; packaging for goods, e.g. perfume bottles; three-dimensional signs and logos (other than those falling under the first two criteria); interior and exterior decor of commercial premises, e.g. the get-up of a restaurant chain; and any three-dimensional words, designs, symbols or colors, or any combination thereof.
The introduction of formalised guidelines for sound marks is unique in Asia and represents a real step forward. The regulations set down in relation to the examination and registration of sound marks state that allowable sound marks comprise commercial tunes (‘jingles’), rhythms, human voices, bells, ring tones and animal calls. The regulations provide for a representation of the sound mark to be made by a musical score, a numerical musical score or a written description, along with a compact disc recording of the sound. As with other forms of trade marks, the sound mark must be distinctive enough to identify the origin of the applied-for goods/services. Furthermore, the sound mark must not be descriptive of the quality, function or description of the goods/services applied-for.
The first registrations for three-dimensional marks and sound marks under the new regime were allowed onto the register towards the end of 2004 and further developments are eagerly awaited.
Colour marks and three-dimensional marks are allowed in South Korea, although here too there is a distinctiveness requirement that the mark does not consist solely of a very simple and commonplace sign, and that a three-dimensional mark does not consist solely of a shape essential for the function of the goods or their packaging. Sound marks are not allowed, although it may be possible to protect sound marks under the Unfair Competition Prevention Act. Smell marks are not registrable.
Colour marks consisting purely of a colour or colours without further delimitation are allowed, subject to the usual tests of absolute and relative grounds of refusal. In the case of a colour mark the Singapore Registry will usually require substantial demonstration of prior use before registration is allowed. Three-dimensional marks are allowed in Singapore subject to the usual tests of the mark not being descriptive of the goods/services or possessing a form that purely fits its function. Smell and sound marks are not allowed.
Colour marks consisting purely of a colour or colours are registrable under Malaysian law. Three-dimensional marks are registrable provided they are considered capable of distinguishing one undertaking from another, and that they are not purely functional. Also, certain geometric shapes are excluded from registrability to keep them available for general use. Smell marks are not registrable but sound marks may be registered with an audio recording filed as part of the submission.
Three-dimensional marks are allowed provided the shape is not that which results from the goods themselves, the shape of goods which is necessary to obtain a technical result or a shape which gives ‘substantial value’ to the goods or services claimed. In addition, common shapes or ordinary articles which may be legitimately needed by traders or manufacturers are likely to be excluded from registration. Colour marks are allowable although it would be difficult to obtain registration for a single colour on its own without delimitation as the legislation refers to a combination of colours in their references to colour trade marks. Sound marks are not mentioned explicitly in legislation but the consensus is that provided the sound can be reproduced graphically, either by musical score or other means of notation, sound marks should be allowable providing the test of distinctiveness is satisfied.
A version of this article was first published in World Trademark Law Report.