Making your mark
7 January 2008
Most of us are familiar with the concept of using a word to serve the function of a trademark, which indicates the origin of the goods. But behind the purchasing activity of the average customer lies a whole host of other indicators or 'trademarks' that can be protected to ensure the customer is not misled.
The UK Trade Marks Act 1994 defines a trademark as "any sign capable of being represented graphically which is capable of distinguishing goods and services of one undertaking from those of other undertakings".
The act goes on to say that "a trademark may in particular consist of words (including personal names), designs, letters, numerals or the shape of their packaging".
The skill lies in identifying which part of the product or marketing is unique to the organisation, providing a graphical representation of the mark that is clear and precise, and being aware of the exclusions that apply even if the mark is well known.
The courts have been consistent in their treatment of unusual trademarks in the past few months, refusing registrations for the shape of speakers by Bang & Olufsen, a plastic bottle by Develey, the texture of a glass surface by Glaverbel and the shape of a sausage by De Waele.
James Dyson pioneered the bagless vacuum cleaner. The clear plastic collection chamber that holds the dust forms a distinctive part of the vacuum cleaner sold by Dyson Group. The company therefore sought to protect this part of the visual appearance of the product by applying to register the shape of the collection chamber as a trademark.
The shape was represented graphically using both a picture of the collection chamber and the words: "The mark consists of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation". This satisfied the criterion that the mark must be represented graphically.
However, the mark must also be clear and precise. The European Court of Justice (ECJ) decided that the written description did not define clearly the shape of one collection chamber, but rather the concept of a collection chamber, which may take more than one shape. As a result, it held that this was not a clear and precise representation and the application was refused.
When Lego applied to register the shape of one of its well-known plastic Lego bricks as a trademark, it successfully represented the mark graphically by presenting a picture of one of the bricks on the application form. This was accepted as being clear and precise.
However, to be acceptable for registration, the trademark must also be distinctive. Although a shape may be a trademark, there are three specific types of shape that can never be registered as a trademark even if the shape has been used for many years.
Those exceptions are set out in Section 3 of the Trade Marks Act, which states: "A sign shall not be registered as a trademark if it consists exclusively of the shape which results from the nature of the goods themselves, the shape of the goods which is necessary to obtain a technical result or the shape which gives substantial value to the goods".
In the Lego case, the Board of Appeal found that the shape was functional, that is to say that it fell within the 'technical result' exclusion in that it was designed to link with other similar-shaped bricks. Although the applicant argued that there were other ways of achieving the same result, the fact that one aspect of the shape was functional precluded the shape from being registered as a trademark no matter how familiar that shape may be to the public.
G Star International, which sells jeans, was more successful in that it was able to register the pattern of stitching used on the surface of its jeans as a shape trademark in Belgium. However, when the company came to enforce its rights against Benetton in connection with use of a similar style of stitching on jeans, the ECJ ruled that the Belgian registrations were invalid because the trademark consisted of a shape that gives substantial value to the goods. This decision was made despite the fact that G Star was able to show significant use of its trademark.
There are not many companies that identify their services with a particular smell. Although the recent case by the UK Court of Appeal between L'Oréal and Bellure is commonly referred to as the 'smell-alike' case, it is about comparative advertising rather than the smell of perfume.
Bellure had been selling cheap 'knock-off' perfume that it claimed smelled the same as the perfume sold under the trademark Tresor by L'Oreal. Bellure refers to the premium brand perfume in its price list, triggering a trademark infringement claim.
The Court of Appeal recently referred this case to the ECJ in order to clarify what is meant by the phrase 'takes unfair advantage' in connection with comparative advertising. The UK litigation arising out of this dispute does not therefore relate to the smell of the perfumes themselves, merely to their naming and packaging.
It has long been established that colour can be registered as a trademark subject to the colour being represented graphically in a clear and precise manner. BP, for example, has registered the colour green as applied to the service station forecourt, and successfully enforced the registration against a competitor.
The detail of which colours can be registered is still evolving, particularly regarding colour combinations.
Although strictly speaking not a colour, the recent cowhide case is still interesting in that it it gives some insight into how the courts compare these types of marks in an opposition.
Robert Wiseman & Sons applied to register a distinctive pattern of cowhide in black and white in connection with dairy produce as a Community Trade Mark. However, Belgian dairy group Inex opposed the application based on its Benelux registration for the pattern of cowhide with other distinctive elements, but failed in its opposition. The Court of First Instance dismissed Inex's appeal on the grounds that the two marks cover different patterns of cowhide.
The use of increasingly diverse forms of media to communicate and sell products to customers resulted in the film company behind Tarzan's yell to apply to register the sound of that yell as a trademark. In the trademark application, the sound was presented as a spectrogram.
EU Community Trade Mark register OHIM refused the application on the basis that "it is impossible to recognise from the image as filed whether the sound phenomena depicted therein is a human voice or something else, eg the tune of violins or bells or a dog's bark".
The office went on to state: "Nobody would be able to hum the Tarzan yell from the spectrogram and nobody reads spectrograms for entertainment."
As a result, the application was refused registration and has since been replaced with a new one in which the sound is presented as a sound file, because this is allowed under the new rules.
•Mary Bagnall is a partner and Susie Curtis is a trademark adviser at Mayer Brown