This series of articles will cover each of the most pertinent non-traditional trade mark categories and will explore successful applications, difficulties in obtaining registration, issues with enforcement and the contemporary commercial context of each.

To understand the issues surrounding non-traditional marks, the best place to start would be by defining what a trade mark actually is. A trade mark is a badge of origin which enables the consumer or end user to identify particular goods and/or services from one undertaking as opposed to another. For a mark to be capable of acting as a badge of origin, it must logically possess a sufficient degree of distinctive character to enable the consumer to identify its origin without confusion when it is used in conjunction with specific goods and/or services.

The term trade mark is often confused or used interchangeably with the term brand and although the two concepts do possess a degree of overlap, they are essentially different and individual. Ogilvy, the international marketing company, defines a brand as ‘the intangible sum of a product’s attributes: its name, packaging and price, its history, its reputation and the way it’s advertised’.  A trade mark on the other hand can be seen as the legal monopoly afforded to different parts of a brand such as the product or brand name, brand logo, trade dress, signage, slogans/straplines etc. 

A registered trade mark confers a broad and valuable monopoly and provides the proprietor with absolute rights over the mark in relation to the goods and/or services for which it is registered. In effect, this means that the owner of a registered trade mark enjoys the exclusive right to use that mark and can prevent others from using identical or confusingly similar marks on identical or similar goods/services covered by the registration.  

The strength of the monopoly is further enhanced by the potential life span of a registered trade mark. Patents can last up to 20 years, original works will enjoy copyright protection for the life of the author plus 70 years (unless published), registered designs can last for a maximum of 25 years and an unregistered design can enjoy protection for up to 15 years. However, a trade mark can enjoy protection perpetually, subject to on-going use, avoiding the transition to becoming generic and being renewed every ten years. A good illustration of the longevity of a registered trade mark is the Bass & Cos Pale Ale device which was registered on 1 January 1876 and is still protected today. 

Brands communicate origin, quality and complex information about the products they cover such as the emotions or feelings they invoke, characteristics of the goods or services, a certain lifestyle associated with using the products, elitism or the ‘everyman’ in all of us,  exclusivity and the list goes on. In view of the absolute monopoly conferred by registration and the potential for protection to last indefinitely, obtaining trade mark registration is an attractive prospect with clear strategic and commercial benefits. Consequently, many brand owners seek to stretch the scope of trade mark law to encompass different aspects of their brand which may have traditionally enjoyed some protection from other IP rights. These marks are commonly categorised as non-traditional trade marks. 

Examples of non-traditional marks include colours per se, shapes, slogans, smells, sounds and even motions such as the famous ASDA tapping of the back pocket gesture. Accordingly, there is potential for a brand owner to obtain an absolute and indefinite monopoly over elements of their brand such as the colour of their trade dress or get-up, the shape of a particular product, distinctive slogans/strap lines, imprints, a smell associated with their brand or even a distinctive sound connected to their product. 

Inevitably these categories of marks are more difficult to register than traditional marks and the two most common problems encountered en route to registration are:

  1. Satisfying the requirement of graphic representation pursuant to s3(1) Trade Marks Act 1994 (as amended) (TMA ’94) and Article 4 Community Trade Mark Regulations (No 207/2009) (CTMR); and
  2. If the mark is capable of being represented graphically, demonstrating that the mark is capable of acting as a badge of origin by proving that it is not devoid of any distinctive character (this is a common relative ground objection raised under s3(1)(b) TMA ’94 and Art 7(1)(b) CTMR). 

Despite the current difficulties, we may witness a significant increase in the number of non-traditional trade marks that proceed to registration over the forthcoming years. Impressive advances in technology are constantly pushing the boundaries in which we communicate and receive information and this inevitably gives rise to new mediums for marketers to exploit their brand. 

Examiners will need to strike a sensible balance between protecting marks which reflect the contemporary commercial reality on the one hand and protecting the interests of traders on the other who may be disproportionately disadvantaged by an absolute monopoly which covers non-traditional marks.