The purpose of the present article is to give a general perspective about non-traditional trademarks and how Mexican jurisdiction has recently adopted the protection of these signs, including some of the main problems that trademark lawyers have been facing in relation to their graphical representation.
As diverse marketing strategies have led companies and other actors in commerce to generate besides three-dimensional shapes, other forms of distinctiveness such as sounds, smell and dynamic images, among others, to distinguish their products and services and have successfully managed to get consumers to identify this type of sign perceptive by human senses, the traditional concept of trademark has transformed to other aspects that are not words, symbols, designs, or a combination thereof.
Considering the above and the effort among WIPO (World Intellectual Property Organization) countries to harmonize legislations in relation to trademarks to protect non-traditional marks, Mexico enacted an amendment to its Mexican Industrial Property Legislation that came into effect past August 10, 2018, where protection over non-traditional marks was recognized.
Consequently, Mexican Trademarks Office through its recent named General Director Juan Lozano, has granted into registration the first non-traditional certificates of registration within the scope of olfactory marks, sound and commercial image, as we will refer further in this paper.
It is important to have in mind a definition of a non-traditional trademark since this concept can be extremely wide and ambiguous. The Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications, that is a permanent committee responsible for studying trademarks, designs, and geographical indications, that was stablished by the World Intellectual Property Organization (WIPO), upon its analysis of the non-traditional trademarks, divided them into visual trademarks and non-visual trademarks, being as examples of the first ones, three-dimensional marks, color marks, holograms, slogans, titles of films and books, motion or multimedia signs, position marks, gesture marks, and what regards to non-visual trademarks, we can include sound marks, olfactory marks, and texture of feel marks.
As non-traditional trademarks emerged into law scenario, it also came into reality some outstanding issues, such as the manner in which they must be represented graphically, in order to be filed with the application before each of the Trademarks Offices, since a clear and precise graphical representation ensures that all the rights and liabilities established under the law are available.
Some types of non-traditional trademarks and their main aspects of registrability.
Since the variety of non-traditional marks is wide, we will make a brief analysis of the ones we consider the most relevant, i.e. olfactory marks, sound marks, trade dress and color marks.
- Olfactory marks.
As we know, people interact not only through sight and sound but also through smell, since it evokes different memories and associations for human mind, and although smell cannot be perceived identically by all of us, it can be registered as a trademark and have legal protection in Mexico and other countries such as the United States.
The importance of olfactory marks is that they evoke the consumer’s olfactory memory by helping them to identify a product or service and to relate it with the trademark with the use of smell, being attached directly to the good or service itself, its packaging of place of rendering.
In olfactory marks, the main challenge is to give to the Trademarks Office a description of the smell that is precise enough to indicate its distinctive character, and also we must take into consideration that the characteristic smell of a trademark must be uniformly and exactly the same on all occasions, since the trouble with smells is that they can be impacted by other factors such as humidity and wind conditions, that can strengthen of weaken the potency of a scent.
In light to the above, proving that consumers perceive a particular scent as a trademark rather than merely an appealing future of the goods or services is a difficult task, in addition with other countries such as the United States, in which description of scent marks registered with the USPTO are relatively vague and a court may have difficulty enforcing the scent of bubble gum, cherry, grape, strawberry, vanilla.
Scent marks can be divided into three categories according to the type of product or service they relate to: “Primary scent marks” are those which have for sole purpose the emission of a fragrance, such as perfumes, air fresheners, “secondary scent marks” include products or services that do not serve the main purpose of the object but which nonetheless from a necessary attribute, such as soaps and detergents, and “unique scent marks” that are concerned with products or services which are not enhanced as such by addition of a scent, such as embroidery yarn.
In Mexico, there are no clear parameters in relation to the graphic representation of olfactive marks. What practice has shown us, is that, it could be integrated into a material support such as a paper or cotton with impregnated aroma or a container with the essence or fragrance or detailed description of the scent, or the product “per se” with the purpose of obtaining an effective representation, since it will help the examiner in charge to make a decision in relation to its distinctive character vis a vis preexistent registered olfactive marks and the nature of the good or service to be distinguished.
One of the first certificates of registration granted in Mexico in relation to olfactive marks was given to Sureste Sustentable S.A. de C.V., for a bamboo-smelling paint and to Hasbro Inc., “Play-Doh”, for a toy modelling dough that smells a combination of sweet with a vanilla-dyed fragrance, cherry and the natural scent of dough based on wheat flour.
The main aspects to consider on olfactory marks would be the challenge of the graphical representation in order to describe to the examiner the exact smell that is distinctive enough in relation to the related products or services, since it is not possible to register the smell of “butter” to distinguish “butter”, since one of the main purposes of trademarks is to have exclusivity of use, and should not allow other competitors from using smells that are intrinsically related to the nature of the involved good or service.
- Sound marks.
There is another type of non-visual and non-traditional trademarks that we consider important to refer in this paper, and these are sound marks, that have become over the years, as elements to help consumers to distinguish a particular service or product from another.
In what refers to sound marks, the criteria of having a distinctive character of a sound mark applies in exactly the same way as to other types of trademarks, since the registrability of a sound mark depends on “whether the sound is capable of identifying the goods and services as originating form a particular undertaking, and distinguishing it from others”.
As sound marks, all types of sounds that goes from jingles, to noises, songs or sound of flowing water may be protected, being one of the most famous worldwide sound marks the musical notes G,E,C played on chimes as a trademark for NBC radio broadcasting services, the MGM lion’s roar, the song “Sweet Georgia Brown”, for the Harlem Globetrotters basketball team, and the spoken letters for “AT&T”, with a distinctive musical flourishing in the background.
Sound marks are non-traditional trademarks that have a wide variety of graphical representations, since applicant may use a lot of different variations, including musical notation, the combination of consecutive notes, the combination of the spoken words which are superimposed over musical sound and others, being in Mexico the first sound mark was granted to Grupo Gran Cafe de la Parroquia Veracruz, S.A.P.I. DE C.V., of the sound of a spoon that strikes three times a coffee glass.
- Trade Dress.
We cannot leave out the important concept of trade dress as a part of non-traditional trademarks, which may provide a distinctive appearance to a product or service, including labels, wrapping and containers used to package a product, such as milk cartons, or the soda bottle that has unique form and color, that is familiar to consumers, or the decoration of a determined restaurant or store.
The most common way to graphically represent a trade dress, is to attach a photo or a drawing of the involved shapes, lines, design and colors with the description in the application trademark, showing the three dimensions height, width and background, without showing the functionality of the three-dimensional figure or shape in question, adding a description of the characteristics of the three-dimensional shape for the purpose of delineating in detail what the trade dress is about, providing the necessary information and to make it comprehensible to the examiner.
In what respects to color marks, their graphical representation can be admitted by a written description of color or its designation by an identification code recognized internationally, named the Pantone Code, which is a commercial system that designates specific shades numerically and categorizes over thousands of shades by unique codes, in addition with a general description of the color or combinations, and also to the way in which the color will be applied to the goods or services.
The interesting thing about color marks is that the trend seems to be to notice not whether the color is functional in the utilitarian sense but rather whether the color has become a generic indication of a type of the product or service by itself, since the main issue is to prove distinctiveness in relation to one single color.
Although there are other non-traditional trademarks that we did not enter into study, the most important ones have been referred in this paper, with the purpose of letting the reader know the most relevant issues that trademark lawyers face due to the growing wave of non-traditional trademarks, including their graphical representation, which will have to be perfected as time goes by.
In the end, considering that the details of the protection of each type of non-traditional trademarks still differ from country to country, it can be said that we all have to reach an agreement in relation to have a clear standard to generate a conclusive definition of the ideal way to graphically represent each one of them and closely work with counsel to ensure proper protection of the mark.