In previous blogs we explained that trademark law allows brand owners to legally protect a
word, slogan, or a logo provided that it meets the criteria set forth in the
applicable legislation, primarily to be capable of distinguishing the
goods/services of one entity from those of another. However, such traditional
trademarks are not the only signs capable of distinguishing commercial origin.
Brand identity can extent further to elements such as sounds, colors, shapes,
and even smells: Think of Netflix’s opening audio cue, or the Tiffany Blue
color; these are both protected as trademarks in certain jurisdictions. In a
broader sense, while protection is indeed possible, it can also be subject to
strict legal thresholds that vary on the type of sign.
In
the European Union, the registration of such non-traditional marks is generally
allowed under the regime administered by the EUIPO,
if they meet the criteria of being capable of distinguish the goods of one
undertaking from those of other undertakings, and of being represented on the
Register of EU trademarks in a clear and precise manner. In the United States,
non-traditional trademarks are granted protection under the Lanham Act, if they
are distinctive so as to identify a specific brand to consumers, and
non-functional, in that they cannot be essential to the use or
purpose of the article or affect its cost or quality.
Sound
marks are among the most successful forms of non-traditional trademarks. These
include audio signatures such as jingles, tones, or specific sound sequences
that consumers associate with a brand. Well-known examples include the MGM lion
roar, the Intel startup chime, and so on. Sound marks are routinely accepted in
major jurisdictions, including the EU and the United States. The key
requirement is that the sound must function as a source identifier rather than
a decorative or functional element.
On
the other hand, single colors or color combinations can also function as
trademarks, but their registration is particularly challenging because it
should be proven that consumers associate the color exclusively with a single
commercial source, which is often harder with colors. Examples of successful color marks include
Tiffany&Co Blue, T-Mobile Magenta, and Christian Louboutin’s “Red Sole”.
However, in most cases, color is considered inherently non-distinctive unless
it has been extensively used and promoted in the market. Courts and trademark
offices may also be more cautious to avoid granting monopolies over basic
colors, particularly where such monopolization would hinder competition.
Three-dimensional
shapes can also be registered as trademarks, unless such shape is necessary to
achieve a technical result, inherent to the nature of the product or if it adds
substantial value to the goods. A classic example of a successfully registered
shape is the Coca-Cola bottle, which has acquired strong distinctiveness and
subsequent association with the brand over time.
Smell
marks represent the most controversial category of protection. Although
theoretically would be reasonable to consider smell as a source identifier, for
example, a famous perfume brand, they are extremely difficult to register in
practice. The main obstacle is the requirement of clear and objective
representation, which is difficult for smells as they are hard to define
objectively and vary significantly on how different people sense them. An example is the scent of coloring crayons
which was registered by Crayola before the USPTO. Nevertheless, the EUIPO
currently does not accept smell marks for registration, so they remain largely
experimental and rather theoretical.
Non-traditional
trademarks clearly reflect the evolution of branding in modern commerce. While
sound marks are widely accepted and color and shape marks are increasingly
recognized under strict conditions, smell marks are hard or even impossible of
being registered, depending on the jurisdiction. Across all categories, the
decisive factors generally remain distinctiveness, clarity of representation
and absence of functionality.
For more information,
you can contact us at info@ip-legals.com.
