Nontraditional Marks Traditional Definition of a Trademark вЂў Consists of a word, a logo or a combination of both. The word or words may be invented or may appear in a dictionary. A mark may also consist of letters, numerals or a combination of both. A logo may be an abstract design, a stylization or a simple reproduction of an everyday object or image. Definition of Nontraditional Mark Some jurisdictions enable applicants to protect certain nontraditional marks. Generally, the term вЂњnontraditional marksвЂќ covers marks, other than word, figurative or complex marks, that are used to identify products or services. Following are examples of nontraditional marks: вЂў вЂў вЂў вЂў вЂў вЂў вЂў Appearance (including color and/or color combination) Motion Shape Sound Scent Taste Touch Overview of Nontraditional Marks вЂў Nontraditional marks remain quite rare: for example, for 1996вЂ“2012, 57% of Community trade mark applications were for word marks, 42% for figurative marks and just 0.02% for sound marks. There were only 10 applications for hologram marks and 7 for smell marks during that period. вЂў Proof of acquired distinctiveness often will need to be shown to secure registration of nontraditional marks. вЂў Other IP rights (e.g., design rights) may be useful in protecting nontraditional elements of brands in some jurisdictions. Appearance Color вЂ” United States вЂў In general, the right to the exclusive use of a specific color as a trademark on product packaging has met with a mixed response in U.S. court cases. вЂў U.S. Supreme Court held color can qualify for trademark protection (Qualitex Co. v. Jacobson Products Co.). вЂ“ In a unanimous decision, the Court held that вЂњa special shade of green-goldвЂќ functioned as a trademark for dry cleaning pads. вЂ“ For color to function as a trademark, it must be nonfunctional and have acquired distinctiveness. Single Colors вЂ” EU Libertel Groep BV v. Benelux-Merkenbureau (Case C-104/01 (ECJ May 6, 2003)): вЂў Application to register the color orange. вЂў The Court held that color marks are registrable based on acquired distinctiveness. вЂў Graphic representation of a color mark must be вЂњclear, precise, self-contained, easily accessible, intelligible, durable and objectiveвЂќ (these are known as the Sieckmann criteria). This condition may be satisfied вЂњby designating that colour using an internationally recognised identification code,вЂќ such as PantoneВ®. Color trademarks have successfully been enforced in court in other European cases (e.g., BP Amoco PLC v. John Kelly Ltd). Color Combinations вЂ” EU Heidelberger Bauchemie GmbH (Case C-49/02 (ECJ June 24, 2004)): вЂў The applied-for mark comprised the colors blue and yellow for goods in Class 3. The following description accompanied the application: вЂњThe trade mark applied for consists of the applicantвЂ™s corporate colors which are used in every conceivable form, in particular on packaging and labels.вЂќ The application listed the colors under the PantoneВ® system. вЂў The decision is perceived as tightening the rules on color combinations. The application was refused because, without spatial delimitation, the combination of colors comprising the mark was not sufficiently precise. вЂў Applications for color combination marks must include вЂњa systematic arrangement associating the colours concerned in a predetermined and uniform way.вЂќ вЂў Examination вЂњmust also take account of the public interest in not unduly restricting the availability of colours for other traders who market goods or services of the same type as those in respect of which registration is sought.вЂќ Color вЂ” Japan вЂў As a general rule, a single-color mark is not registrable under the Japanese Trademark Law because it lacks distinctiveness and is not able to distinguish the goods as originating from the proprietor. However, it is possible that a color mark can become distinctive based on use. вЂў It is more likely that a color mark will be registered if it is combined with a device or is in a configuration. It was concluded that the examples below satisfy these requirements because of the plurality of colors. Color вЂ” Australia вЂў BPвЂ™s application to register the color green in respect of service stations was rejected. (Woolworths Ltd v. BP plc (No. 2),  FCAFC 132 (Sept. 4, 2006).) The evidence of use of the trademark in that case consisted of predominantly green, with some parts of yellow, which was not considered to support an application for just green being predominantly applied to different parts of a service station. вЂў A dispute spanning several years concerning CadburyвЂ™s applications to register the color purple and Darrell LeaвЂ™s use of the color purple was resolved. (Cadbury Schweppes Pty Ltd v. Darrell Lea Chocolate Shops Pty Ltd (No. 8),  FCA 470 (Apr. 11, 2008).) вЂў Mars was granted a registration for the color вЂњWhiskas Purple.вЂќ (Mars Australia Pty Ltd (formerly Effem Foods Pty Ltd) v. SociГ©tГ© des Produits NestlГ© SA,  FCA 639 (June 22, 2010).) Shapes вЂ” United States The shape may be a three-dimensional representation of the product itself, the container for the product, or the architectural design of a store or signpost. It may be the shape of a label or tag and not simply the words or colors appearing thereon. Examples: вЂў The Coca-Cola bottle вЂў AppleвЂ™s iPod вЂў AT&TвЂ™s globe design Shapes вЂ” EU Koninklijke Philips Electronics NV v. Remington Consumer Products Ltd (Case C-299/99 (ECJ June 16, 2002)): вЂў To be capable of distinguishing an article, вЂњthe shape of the article in respect of which the sign is registered does not require any capricious addition, such as an embellishment which has no functional purpose.вЂќ вЂў вЂњ[S]igns consisting exclusively of the shape which results from the nature of the goods themselves, or the shape of goods which is necessary to obtain a technical result, or the shape which gives substantial value to the goods cannot be registered.вЂќ (See also Trade Marks Directive Art. 3.1(e).) Shapes вЂ” EU вЂ” Examples вЂў Accepted вЂў Rejected Philips three-headed rotary shaver Coca-Cola bottle Bang & Olufsen loudspeaker Dishwasher tablet Shapes вЂ” Japan вЂў In Japan, the percentage of trademarks accepted for registration (1996вЂ“present) is 70%вЂ“85%. The acceptance rate for three-dimensional trademarks is much lower (35%вЂ“55%); for three-dimensional trademarks without any characters, the rate falls further, to approximately 20%. вЂў Very few three-dimensional trademarks that consist solely of functional shapes (i.e., the container of the goods or industrially designed products) have been registered. вЂў 1997 Trademark Law enabled registration of three-dimensional marks. 100% 90% 80% 86.0% 77.7% 70% 67.7% 60% 50% 40% Acquired distinctiveness is normally necessary. 30% Trademarks 20% 10% 3D Trademarks 20 06 20 05 20 04 20 03 20 02 20 01 20 00 19 99 19 98 0% 19 97 Example case: Coca-Cola bottle. 19 96 вЂў 20 09 вЂў 69.9% 54.8% 51.4%50.7% 48.8% 46.9% 46.0% 45.1% 41.3% 39.8% 44.1% 37.2% 33.7% 35.1% 20 08 4,782 applications and 1,929 registrations for three-dimensional marks (1997вЂ“Dec. 2010). 76.7% 74.4% 74.2% 74.7% 75.5% 75.3% 74.7% 20 07 вЂў 71.3% 74.9% 71.3% Shapes вЂ” Japan вЂў Inherently distinctive - Distinctive without submitting any evidence of use of the trademark. вЂў Acquired distinctiveness - Trademarks that were initially rejected for lacking distinctiveness but were ultimately registered following sufficient evidence proving use of the trademark. Trademark s Designated goods/ services Summary & Analysis Class 30 Manju (Japanese confectionery) Rejected in 2006 The judge did not consider that this three-dimensional trademark was distinctive nor that it had acquired a secondary meaning. The decision was based on the fact that the mark merely indicates the shape of bird, which has traditionally been adopted as a shape for confectionery. Class 11 Mini searchlight Registered June 2007 The judge decided that the mark could be registered because it had obtained a secondary meaning based purely on its shape after long-term use. This is the leading case involving three-dimensional marks because the MINI MAGLITE trademark was the first mark deemed to have obtained a secondary meaning based entirely on its shape. This case set the precedent for the future. Formerly, under Japanese practice, three-dimensional trademarks consisting mainly of functional shapes, such as this trademark, had difficulty in securing registration. Class 32 Plastic bottles Registered May 2008 As in the previous cases, the judge decided that this trademark should be registered because it had obtained a secondary meaning. Coca-Cola enjoys a worldwide reputation and huge sales volumes. The amount of advertising submitted as evidence was a significant factor in the decision allowing the shape to proceed to registration, aided by a questionnaire from consumers. Trademarks Designated goods/ services Summary & Analysis Class 30 Registered in June 2008 The judge decided that this three-dimensional trademark of the shape of Guylian chocolate was inherently distinctive enough to be registered. Luxury items such as sweets or foods are more likely to be registered as threedimensional trademarks than trademarks that consist mainly of functional shapes. Class 3 Bleaching preparations and other substances for laundry use and cleaning Registered in April 2011 This case involved a bottle of perfume resembling a naked female body. Although the judge didnвЂ™t consider that this three-dimensional trademark was distinctive, it was recognized that the mark had obtained a secondary meaning because it had been used for over 15 years. Additionally, its fanciful shape helped consumers recognize the trademark. Class 29 Lactic acid bacteria drinks Registered in November 2011 As with other cases, the judge decided that this three-dimensional trademark of a drink bottle should be registered because the mark had obtained a secondary meaning after long use. Shapes вЂ” Australia вЂў RemingtonвЂ™s triple-headed shaver did not infringe PhilipsвЂ™ registration for the shape of a triple-headed shaver. (Koninklijke Philips Electronics NV v. Remington Products Australia Pty Ltd,  FCA 876 (June 30, 2000).) The court concluded that RemingtonвЂ™s use of the triple-headed shaver did not amount to вЂњuse as a trade mark,вЂќ and therefore held that it did not infringe PhilipsвЂ™ registration for the shape of the triple-headed shaver. вЂў Kenman KandyвЂ™s insect shape was held to be distinctive for confectionery goods. (Kenman Kandy Australia Pty Ltd v. Registrar of Trade Marks,  FCAFC 273 (Aug. 28, 2002).) вЂў Registration of GuylianвЂ™s seahorse shape as a trademark was refused on the basis that it was not capable of distinguishing GuylianвЂ™s goods. (Chocolateire Guylian N.V. v. Registrar of Trade Marks,  FCA 891 (Aug. 18, 2009).) вЂў In Gibson ( ATMO 73 (Aug. 12, 2010), an application to register the shape of a house as a trademark was rejected. The delegate of the Registrar of Trade Marks was of the view that the evidence of use of the mark did not establish that the mark was inherently adapted to distinguish the designated goods from similar goods of other traders. Sounds вЂ” United States вЂў May be a jingle or any piece of music or other sound. It may be a short extract from a composition or an entire musical piece. In some cases, it may be a reproduction of an everyday sound, perhaps in an unusual circumstance. Examples: вЂ“ MGM LionвЂ™s Roar вЂ“ NBC Chimes вЂ“ The AFLAC Duck Quacking MGM LionвЂ™s Roar NBC Chimes Sounds вЂ” EU Shield Mark BV v. Joost Kist h.o.d.n. Memex (Case C-283/01 (ECJ Nov. 27, 2003)): вЂў Shield Mark owned numerous Benelux trademarks for the first nine notes of BeethovenвЂ™s вЂњFГјr EliseвЂќ and the sound of a cock crowing (see below) . вЂў The Court of Justice said a sound mark is registrable provided that вЂњit can be represented graphically, particularly by means of images, lines or characters, and that its representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.вЂ¦ [T]hose requirements are satisfied where the [mark] is represented by a stave divided into measures and showing, in particular, a clef, musical notes and rests whose form indicates the relative value and, where necessary, accidentals.вЂќ вЂў Prior to the Shield Mark case, NokiaвЂ™s ring tone was registered as a CTM based on notes on a stave. (CTM No. 1040955, filed Jan. 12, 1999, registered Oct. 30, 2000.) вЂў In 2005, OHIM said that electronic applications could include the sound file as an attachment. Since then, TarzanвЂ™s yell has been registered based on a sonogram and an electronic copy of the sound. (CTM No. 5090055, filed May 22, 2006, registered Mar. 4, 2008.) Sounds вЂ” Australia вЂў вЂў вЂў вЂў вЂў The first sound mark registered in Australia was the sound of the word вЂњsproing,вЂќ intended to imitate the sound of a spring reverberating on metal, in respect of вЂњfloor coverings and underlay, including carpet underlay laminates incorporating rubber or rubber substitutesвЂќ in Class 27. (Reg. No. 738848, July 11, 1997.) The Trade Marks Office recently accepted an application for the sound of TarzanвЂ™s yell for goods and services in Classes 28, 33 and 35. (Reg. No. 1480175, Mar. 14, 2012.) The application was made by Edgar Rice Burroughs, Inc., the estate that owns the rights to Edgar Rice BurroughsвЂ™ Tarzan books. The same test applies to sound marks as for any other kind of trademark. The sound trademark must be capable of distinguishing the goods or services of one trader from those of another. Sounds that are вЂњfunctional soundsвЂќ made by particular goods, and are therefore common to the trade, will not be inherently adapted to distinguish (e.g., the sound of a motorbike engine for goods of motorbikes). It is a requirement that trademarks be represented graphically (Trade Marks Act 1995 (Cth) Sec. 40); however, the Trade Marks Office will accept a precise description of the sound mark, such as musical notation. As of May 31, 2012, there had been 83 applications filed for sound trademarks, of which 39 marks had been registered. Scents вЂ” United States вЂў Scents Applied to Products вЂ“ Plumeria вЂ“ Plumeria scent for sewing thread was registered in 1990. вЂ“ A written description of the scent, with or without a deposited sample, is acceptable in the United States. вЂў Scents Consisting of an Inherent Product Attribute вЂ“ вЂњFunctionalвЂќ scents that are inherent in the product itself, such as the scent of a particular perfume, are not accepted for registration. Scents вЂ” EU Ralf Sieckmann v. Deutsches Patent- und Markenamt (Case C-273/00 (ECJ Dec. 12, 2002) вЂў Application for an olfactory mark for вЂњmethyl cinnamate.вЂќ вЂў Application included an annex with a chemical formula, directions on where to obtain a sample and a description of the scent as вЂњbalsamically fruity with a slight hint of cinnamon.вЂќ вЂў An odor sample in a container was also provided. вЂў The German Federal Patent Court had found that although theoretically a scent mark was capable of distinguishing the proprietorвЂ™s services from those of other traders, it was not capable of being represented graphically. вЂў The Court of Justice held that the requirements of graphic representability set out in Article 2 of the Trade Marks Directive are not satisfied where an odor is reproduced by a chemical formula, a description in written words, the deposit of an odor sample or a combination of these elements. Scents вЂ” Australia вЂў Registration No. 1241420 (May 20, 2008), in the name of E-Concierge Australia Pty Ltd, for a Eucalyptus Radiata scent in respect of golf tee goods. вЂў Pending Application No. 1446529, for вЂњlemon grassвЂќ in respect of health spa services in Class 44. вЂў Application No. 700019, for вЂњthe strong smell of beer,вЂќ in respect of darts in Class 28, was accepted, but ultimately the mark did not proceed to registration because the registration fees were not paid. вЂў As of May 31, 2012, ten applications had been filed for scent marks, of which one mark had been registered and one was pending. Motion Examples of motion trademarks include: вЂў Kraft Foods UK Ltd., for chocolate and chocolate confectionary (UK Reg. No. 228003, Mar. 22, 2002): вЂњThe mark consists of the three dimensional shape breaking apart, as shown in the sequence of still pictures attached to the form of application.вЂќ вЂў GDS Video (hologram, CTM Reg. No. 2117034, expired Mar. 6, 2011): вЂњThe letters VF in white on blue spheres, the name VIDEO FUTUR in blue on a black background.вЂќ The application also indicates the colors used. вЂў Lamborghini (refused as a CTM in 2001, later registered in the United States (U.S. Reg. No. 2793439, Dec. 16, 2003): вЂњThe mark consists of the unique motion in which the door of a vehicle is opened.вЂќ Motion вЂ” Australia вЂў вЂў вЂў вЂў вЂў Motion trademarks (including moving images, holograms and gestures) are some of the more unusual marks that have been registered. The same principles apply: The motion trademark must be capable of distinguishing the goods or services of one trader from those of another. There must be clear graphical representation of all the features of the trademark and a description of the features. A copy of the motion trademark is required for examination. It is difficult to ascertain exactly how many motion trademarks exist, as there is no definitive way of searching for them. Examples include: вЂ“ вЂ“ Registration No. 848112 (Aug. 28, 2000), for вЂњa moving image showing a black bordered yellow coloured square with rounded corners. The letters Y, E, L, L appear individually and sequentially in the square. The representation on the application form shows the eight stills that make up the sequence.вЂќ Registration No. 1134286 (Sept. 7, 2006), for вЂњan animated sequence involving two flared segments that join together as shown in the representations attached to the application. The sequence is of approximately one second's duration. During the sequence, a star-shaped geometric object moves up the outermost line of the first segment, across the apex where the two segments join, and down the innermost line of the second segment. The lines in each segment change colour as the geometric object moves. The two dimensional representations attached to the application form show the progression of the star-shaped object and are stills taken from the animated sequence.вЂќвЂ”for operating system software in Class 9, owned by Microsoft Corporation. Touch The feel of a product can be distinctive, but examples of tactile marks are rare. Exceptions are: вЂў UNDERBERG in Braille (German Reg. No. 30259811, Mar. 12, 2003) вЂў American Wholesale Wine & Spirits, Inc.вЂ™s registration for вЂњa velvet textured covering on the surface of a bottle of wineвЂќ (U.S. Reg. No. 3155702, Oct. 17, 2006) Taste вЂў Taste trademarks have been hard to protect, as trademark offices have argued that taste does not act in a trademark sense. вЂў OrganonвЂ™s attempt to register the taste of orange for pharmaceuticals was rejected in the United States. вЂў Eli LillyвЂ™s application to register the taste of artificial strawberry flavor as a Community trade mark was rejected by the OHIM examiner, whose decision was upheld by the Board of Appeal. In the EU, a taste mark is examined in the same way as all other marks, so it must be capable of graphical representation (i.e., meet the criteria set out in the Sieckmann scent case). Touch and Taste вЂ” Australia вЂў вЂњTextureвЂќ and вЂњtasteвЂќ both fall under the definition of a вЂњsign.вЂќ A trademark is a sign, and so, in theory, it is possible to apply to register such trademarks in Australia. вЂў It appears that no such marks have been registered in Australia. вЂў The same principles apply for registrability: The вЂњtextureвЂќ or вЂњtasteвЂќ mark must be capable of distinguishing the goods or services of one trader from those of another. вЂў There must be a clear description of the trademark and/or a visual representation of it. вЂў The examinerвЂ™s manual states: вЂњWhile вЂ�tasteвЂ™ arguably falls within the definition of a sign, it is difficult to determine how a taste or flavour could serve to distinguish an applicantвЂ™s goods. It may often not be practical (or hygienic) for a customer to taste goods prior to selection and purchase. Tasting the goods after purchase does not seem to meet the requirements of denoting a trade source.вЂќ Trade Marks Office Manual of Practice and Procedure Part 21.10.