Essay question on the extent to which the Trade Marks Act 1994 has expanded the range of product attributes that could be registered as a trade mark

Intellectual Property

Michael Roberts

Tutor Group: A

Dr.

‘The Trade Marks Act 1994 was intended to expand the range of product attributes that could be registered as a trade mark, but the extent to which it has achieved that goal is debatable’ (Michael Spence, 2007).

Do you agree with this statement? Illustrate your answer by reference to the case law on the registrability of non-traditional trade marks.

Since the Trade Marks Act 1994 (“the legislation”) was enacted to implement the Trade Marks Directive (Directive 89/104) (“the Directive”), the traditional notion that trade marks are limited to words and pictures has been eradicated. Recently, all kinds of product attributes have fallen under the scope of trade marks: some successfully, others not so successfully. The impact the legislation has had on the trade mark registration system is unquestionable, but the extent to which its goals have been fulfilled is certainly a matter of debate. I will now briefly outline the structure of the essay. Firstly, the main provisions of the Trade Marks Act 1994 will be set out, following which I will outline various types of unusual trade marks with reference to appropriate case law. After this I will evaluate the extent to which the legislation has achieved its goals. Over the course of this essay I hope to show that the legislation has had limited success in expanding the range of registrable product attributes, but also I wish to contest the assertion that the legislation was passed with the direct intention of expanding such attributes to any significant degree.

The Trade Marks Act 1994 was the result of the European Union’s aspiration to approximate the trade mark laws of member states. Section 1 of the legislation defines a trade mark as “any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings”. From this one can identify three necessary criteria for a trade mark to be registered: the mark must be a sign, it must be capable of being represented graphically, and it must be capable of being distinguished. The first criteria has not proven too problematic with many different product attributes being classified as signs, such as numbers, signatures, shapes and so on. The third criteria appears to be somewhat redundant, as it is also covered in the legislation under section 3(1)(b) which provides that “trade marks devoid of distinctive character” shall not be registered. However, for the purposes of this essay it is sufficient to say that the first and third criteria generally have not been an obstacle for unusual trade marks. However, complications arise when questions of graphical representation are considered. When the legislation was first passed, there were preliminary debates as to whether things like sounds and smells would be registrable. Since then, much guidance on the issue has come from the European Court of Justice. According to the ECJ, the purpose of the requirement of graphic representation is to define as far as possible the “precise subjection of the protection so that both the authorities and the general public know what is being claimed as a mark”. Obviously it is important for the authorities to know in order to keep a complete and coherent register of marks. Likewise, other traders need to know exactly what their competitors’ rights are. I will now go through the various types of non-traditional trade marks: smells, colours, sounds and tastes.

This is a preview of the whole essay

The first unusual trade mark application held before the ECJ was Sieckmann v Deutsches Patent and it concerned the registration of a smell, ‘methyl cinnimate’ which the applicant described as ‘balsamically fruity with a slight hint of cinnamon’. He also provided the chemical formula for the smell. The ECJ consulted article 2 of the Directive in considering whether ‘graphic representation’ included only signs which were capable of being represented visually, or if it included other signs as well. The ECJ decided that a sign did not necessarily have to be perceived visually provided that it could be represented through the use of images, lines or characters. The Sieckmann case produced a test (subsequently known as the ‘Sieckmann Seven’), a list of criteria which are used to help determine whether or not an unusual trademark is capable of graphic representation. The mark must be clear, precise, self-contained, easily accessible, intelligible, durable and objective. In the present case the smell was non-registrable, as the written chemical formula represented the chemical itself rather than the odour. The sample was not durable, and the written description was also insufficient. It seems that there has only been one successful odour registration since the legislation, and it occurred before Sieckmann. It seems that in future the registration of a smell will be a very difficult prospect.

The next major case concerned the registration of a colour as a trade mark. In Libertel Groep BV v Benelux-Merkenbureau the applicant wished to register the colour orange, along with the word ‘orange’. The ECJ reiterated the Sieckmann criteria, under which a colour may be registered if it meets the requirements. A sample of the colour is insufficient at colour samples fade over time. However, the identification of a particular colour using an internationally recognised system (such as the pantone system) would apparently meet the Sieckmann criteria. This raises further issues, however, as there are only so many different shades which the human eye can distinguish, which would seem to defeat the point of the trade mark. If the ECJ only accepted shades which were visually distinguishable, this would severely limit the number of colours available to registration (the ‘colour depletion theory’). Furthermore, what would be the case if two traders registered the same shade of colour under different colour identification systems? Such questions, though interesting, lie beyond the scope of the essay and for present purposes it is sufficient to note that colours may be registered using a colour codification system. It may also be possible to register multiple colours in one mark depending on the context and arrangement of those colours.

Another difficult area of registrability is by the use of sounds as trade marks. The prime case on this particular issue is Shield Mark BV v Joost Kiss in which the former company had registered various marks, including a musical representation of the beginning to Beethoven’s Fur Elise, the words “the first nine notes of Fur Elise”, the first nine note letters of Fur Elise, the words “kukelekuuuuu”, and “a cockcrow”. The ECJ essentially confirmed what they had held in the previous cases of Sieckmann and Libertel. The court helpfully highlighted which of the representations in the present case failed to meet the criteria, and those which did. In this case all failed with the exception of the representation of musical notation, provided it was accurate. This seems to make clear the position of music as a registered trade mark: a graphical score will suffice. It does not, however, indicate how one might go about registering other types of sounds, such as animal noises. One could infer from this that the ECJ did not consider the Directive to facilitate the registration of sounds as trade marks, as a general rule.

Taste is another controversial area. There does not appear to be any official ECJ judgment on this but the domestic case of Eli Lilly Co’s Community Trade Mark Application [2004] sheds some degree of light on the matter. This concerned the application for an artificial strawberry flavour for use in pharmaceutical products. The Office for the Harmonisation of the Internal Market (OHIM) refused to allow the application on two grounds. The first and most important reason was that it failed to meet the Sieckmann criteria for graphic representation. Secondly, it is not clear that taste could really serve as an indication of origin. From this limited information, one can only conclude presently that it seems difficult to give enough information on the application to specify what is being trade marked where tastes are concerned.

In order to evaluate the extent to which the legislation has achieved its goals, one has to consider what its goals actually were. It is very unlikely that the legislation intended to make registration of certain unusual marks possible. On the other hand, the legislation has very much opened up the possibility of registering unusual marks. The subsequent decision in Sieckmann spawned a series of cases, most notably the ones discussed above. Applications for these unusual marks are restricted by the Sieckmann criteria, but it does not seem that the ECJ have said explicitly that any unusual mark can definitely not be registered. To sum up the current position on unusual trade marks, smells and tastes appear to be very difficult to register, while the registration of colours as a trade mark seems perfectly feasible. The potential for registering sounds varies, depending on what the sound is. Music may be trade marked in the form of musical notation, but other sounds run into difficulties of graphic representation. So, it appears as though whilst the legislation has opened up the possibility for registration of a wider range of product attributes, many of the new applications have been refused by the ECJ. I would argue, therefore, that the legislation does succeed in expanding the range of registrable product attributes but perhaps not to any significant extent (though this may change in the future).

I find the title question difficult to answer as it depends mainly on what the intention of the legislation actually is. There is a case for maintaining that the legislation’s goal is simply to comply with the Directive, in which case it succeeds. The ECJ in making its decisions consulted the Directive, which was also used by Parliament in creating the legislation. So perhaps one could argue that the failure to significantly expand the range of product attributes is not a fault of the Trade Marks Act 1994 but rather a deficiency in the Trade Marks Directive.

Word Count: 1,631 (inc. footnotes)

Bibliography

H. MacQueen, C Waelde & G. Laurie “Contemporary Intellectual Property”, OUP

Blackstones Statutes on Intellectual Property Law, 8th Edn. Christie & Gare

62/64

“1010” – UK TM no. 2142860

“Marilyn Munroe” TM 1308828 (US)

H. MacQueen, C Waelde & G. Laurie “Contemporary Intellectual Property”, OUP pp 574-575

‘The smell of freshly cut grass’ – TM no 000428870

Heidelberger Bauchemie GmbH [2004]