Brand owners will have to work harder and smarter to enable consumers to recognise non-traditional types of mark as possessing distinctive character

A brand can be defined as the intangible sum of a product’s attributes. A trademark, on the other hand, is the legal monopoly afforded to different parts of that brand – most obviously the brand name and logo, but also increasingly other aspects, such as marketing slogans, brand colour(s), product shape and more obscure concepts such as sounds, smells, tastes and gestures. What bands this disparate group of non-traditional marks together is the difficulty in achieving registration, keeping the mark on the register and successfully enforcing the registration against infringers.

Despite repeated judicial statements that the criteria for assessing the registrability and validity of non-traditional trademarks are no more stringent than those applicable to traditional marks, in practice it remains difficult to secure registration in the United Kingdom.

There is an underlying public policy interest in allowing these types of mark to remain available for use by others, particularly where a finite number are available (eg, colours). Further, consumers are not necessarily educated to perceive non-traditional marks as indicators of trade origin; hence, proof of acquired distinctiveness is almost always required in order to obtain a registration. There are also public interest considerations in preventing an entity from obtaining a potentially perpetual monopoly in respect of a sign which perhaps ought to be protected by a time-limited IP right such as a registered design.

In the United Kingdom, the landscape will likely continue to evolve and brand owners should consider how this shifting tableau may affect them when trying to protect unconventional aspects of their brand.

Shapes

For any trademark to be registrable, it must have distinctive character. For a shape mark to have inherent distinctive character, it must depart significantly from the norm or customs of the sector (eg, a fanciful or unusual shape for the goods concerned). However, a recent case before the UK High Court, LTC v Frazer-Nash, established that simply departing from the norm is not enough; the mark must also be perceived by consumers as an indication of origin. Many shape mark applicants may therefore seek to rely on acquired distinctiveness as the basis for registration.

In the Nestlé v Cadbury decision concerning the KitKat shape mark, the UK High Court held (following a reference to the European Court of Justice (ECJ)) that the trademark applicant must show that consumers understand that the goods or services originate from a particular entity because of the shape mark, as opposed to any other trademarks which may be present, such as a brand name.

Few cases have discussed the enforcement of a shape mark against infringers because many actions fail due to a finding of invalidity, pre-empting the court from considering infringement. However, in LTC the court offered some guidance on comparisons between marks and signs, including the following:

  • It is the visual comparison which matters;
  • Aural and conceptual comparisons are irrelevant; and
  • Where there is no indication of size or scale, size must not be taken into account.

In general, it is the overall impression which matters, not the details identified as different through a side-by-side comparison. Interestingly, the court held that the presence of the defendant’s name on the taxi would not militate against a finding of confusion because there was no reason to believe that consumers would be aware that the defendant’s sign denoted a different trade origin from that of the shape trademarks. This could have been different had either party’s name been well known.

As matters stand, brand owners will likely find it difficult to demonstrate that consumers rely on a particular shape mark (as opposed to other indicators such as brand name) as an indication of origin. Marketing teams should consider what use can be made of shape marks in order to increase consumer reliance on them.

Looking forward, it will be interesting to see whether a party which has been unable to obtain a registration for a shape mark could nevertheless bring an action for passing off based on the goodwill and reputation in that shape. In Reckitt v Borden the claimant was able to establish that the lemon-shaped packaging of its Jif product was a “crucial point of reference” for customers, and that little or no attention was paid to the label containing the brand name. The defendant’s replica of the shape therefore amounted to passing off, even though it bore a different brand name. Likewise, in a case concerning Henry vacuum cleaners (Numatic v Qualtex), the court held that the public had been educated to recognise their shape as an indication of origin, while noting that consumers were unlikely to have known the name of the company behind Henry cleaners. A different brand name would therefore be unlikely to distinguish the replica from the original. With no “striking branding taking the replica product out of the norm of what would be expected for a Henry”, the passing-off claim succeeded.

The requirements for a successful passing-off claim (ie, recognition of the shape as an indication of origin and no or minimal reliance on brand name) closely resemble those for registration of a shape mark. They are also consistent with the commentary on infringement in LTC, where the use of a different, lesser-known brand name was not sufficient to avoid confusion. It therefore seems unlikely that entities which cannot obtain a valid shape mark registration – because it is the brand name, not the shape, on which consumers rely – would nevertheless be able to rely on that shape in proceedings for passing off. However, if it is possible to demonstrate passing off against an entity using a replica shape, but a different brand name, the claimant should be able to rely on that finding to prove that consumers do in fact rely on the shape when applying for a registration.

Colour, sound, smell and taste

Under previous EU legislation, a sign for which registration is sought must be “capable of graphic representation”. The ECJ in Sieckmann further held that such graphic representation must be clear, precise, self-contained, easily accessible, intelligible, durable, unequivocal and clear. This has created a number of pitfalls for the registration of unusual marks such as colour, sound, smell and taste marks.

The new EU Community Trademark Regulation (2015/2424, which came into force on March 23 2016), and the new EU Trademarks Directive (2015/2436, which must be implemented within the next three years) remove the need for graphic representation, but retain the requirement that the subject matter of the mark be “clear and precise”. Moreover, the Sieckmann criteria are set out in full in the preamble to the legislation. It thus seems unlikely that this change will open the floodgates to successful registrations of non-traditional marks, although it will be interesting to see whether applications for new categories of trademark spring up as technology advances.

Slogans

Slogans can be registered provided that they are not descriptive of characteristics of the goods or services or devoid of distinctive character. As with other non-traditional trademarks, the criteria applied to slogans are not stricter than those applied to traditional marks. However, it can be particularly difficult to establish distinctiveness in advertising slogans, since the public is often unaccustomed or slower to recognise promotional statements as performing a trademark function.

The UK Registry Practice Manual indicates that slogans which are in some way fanciful (eg, CATCH A WRINKLE IN TIME for cosmetics), are impenetrable (eg, ACCELERATING YOUR CHEMISTRY for metal fences) or consist of an unusual combination of terms (eg, OPEN POUR ENJOY LIFE ONCE MORE for non-alcoholic drinks) may well individualise the goods of one trader. However, in practice, evidence of acquired distinctiveness is usually required to achieve registration.

Nestlé successfully registered the slogan HAVE A BREAK… HAVE A KITKAT for chocolate and confectionery. It then applied to register HAVE A BREAK on its own, but the UK Court of Appeal found the expression to be devoid of distinctive character. On a reference to the ECJ, it was confirmed that distinctive character in HAVE A BREAK could be acquired through use of the expression as part of, or in conjunction with, another mark (HAVE A BREAK… HAVE A KITKAT); the slogan then proceeded to registration on the basis of acquired distinctiveness.

By their nature, slogans contain a broad message designed to attract a wide audience. It is likely that these marks will continue to face distinctiveness and descriptiveness objections and potentially objections based on the term having become customary in trade (ie, generic).

Commercial strategy

Notwithstanding these difficulties, it may well prove beneficial to brand owners to persevere with non-traditional trademarks. For instance, if shape marks are the norm in a particular sector (eg, bottles in the alcohol industry), investors may expect to see shape marks in the portfolio when a brand is divested. As with other marks, a successful registration could dissuade putative infringers and be registered with Customs and used to target counterfeits.

To increase the chances of registration, it may be sensible to delay applications in order to generate evidence of acquired distinctiveness. Educating consumers to understand that non-traditional trademarks function as an indication of origin is also a must. Care should be taken over how these marks are used in promotional literature and advertising.

Brand owners will have to work harder and smarter to enable consumers to recognise these types of mark as possessing distinctive character. Brand owners that value such non-traditional marks should devise a strategy for obtaining and maintaining a valid registration, which must necessarily include strict guidelines for their use, the promotion of relevant goods and services by specific reference to the non-traditional mark and vigorous policing of third-party use.

Gina Lodge and Uti Ekpiken

This article first appeared in World Trademark Review. For further information please visit www.worldtrademarkreview.com.