Unconventional trademarks by Professor Eleonora Rosati, Intellectual Property attorney.
Professor Doctor Eleonora Rosati is an Italian-qualified lawyer with experience in copyright, trade marks, fashion and internet laws. Professor of Intellectual Property Law, Stockholm University; Director of the Institute for Intellectual Property and Market Law (IFIM), Stockholm University; Of Counsel, Bird & Bird; Guest Professor, CEIPI-Université de Strasbourg; Visiting Professor, Universidade Católica Portuguesa; Research Associate, LegalEdhec-EDHEC Business School; Associate, CIPIL-University of Cambridge; Editor, Journal of Intellectual Property Law & Practice (Oxford University Press); 'PermaKat', The IPKat; Co-Founder, Fashion Law London.
For the first time this article about Unconventional Trade Marks was published in the December issue of Alicante News, EUIPO in December 2021. Then another version, completed by the examples was published in IPKat in July 2022.
How unconventional is ‘unconventional’ IP?
When we think of the different intellectual property (IP) rights and what each of them protects, we usually refer to – for example – words and logos for trade marks, books and art for copyright, a piece of furniture or a fashion creation for design rights, a pharmaceutical drug or a machine for patents.
Yet, IP can also protect ‘things’ or ‘objects’ that may be perceived as being less conventional than those above.
When we speak about the IP protection available, for example, for sounds, or colours and patterns, shapes, tattoos, memes and GIFs, or tastes and smells, we refer to ‘non-traditional’ or ‘unconventional’ IP. But how easy is it to protect these ‘objects’, in particular as trade marks?
Starting with sounds, those that can be represented through musical notation, like a jingle, can be protected in principle under trade mark and copyright law. But how about those sounds that cannot be represented through musical notation, take for example “the acoustic rendition of the belling of a stag” or “the yell of the fictional character TARZAN”? While copyright seems unavailable to them, trade mark protection requires determining whether such sounds act as indicators of commercial origin, that is – in technical terms – whether they display the required distinctiveness.
For quite some time, especially in the aftermath of a seminal ruling of the Court of Justice of the European Union (CJEU), those seeking trade mark registration of such sounds faced difficulties complying with the requirement of graphical representation of marks. Following the latest reform of the EU trade mark system and a change in the representation requirements, the European Union Intellectual Property Office (EUIPO) can receive trade marks applications for signs represented by the accepted formats. For sound marks, the EUIPO only accepts applications that are an audio file reproducing the sound.
Colours, patterns and shapes
Colours and patterns, for instance the colours of a well-known football club or the pattern used by an iconic fashion house, can be also protected – among other things – as trade marks. Today, the representation requirements of colour and pattern marks have been clarified by the case law and by the EU trade mark reform.
Like shapes (for example the shape of the bottle of a soft drink or the shape of the packaging of a chocolate bar), consumers do not always perceive colours and patterns as being indicators of commercial origin in themselves. The key requirement of distinctiveness may thus not always be fulfilled at the very outset. Like for other marks, distinctiveness may be however acquired through the use made of the sign and the resulting effect on consumer perception.
In addition to the above, another aspect to take into account is that the law prohibits the registration of certain shapes and other characteristics of goods, for example shapes that are exclusively technical like that of a well-known company’s toy bricks or the shape of the Rubik’s Cube, irrespective of whether such signs are perceived by consumers as indicators of commercial origin.
The General Court concluded that the applicant’s shape (Maison Guerlain) is unusual for a lipstick in that it reminds one of a boat hull or a baby carriage. As such, it differs from any other shape on the market.
LEGO Judgment of the Court (Grand Chamber) of 14 September 2010. Lego Juris A/S v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM). Appeal - Regulation (EC) No 40/94 - Community trade mark - Suitability of a shape of goods for registration as a trade mark - Registration of a three-dimensional sign consisting of the upper surface and two sides of a Lego brick - Declaration of invalidity of that registration on application by an undertaking marketing toy bricks having the same shape and dimensions - Article 7(1)(e)(ii) of that regulation - Sign which consists exclusively of the shape of goods which is necessary to obtain a technical result. Case C-48/09 P.
Tattoos, memes and GIFs
Turning to tattoos, these are often artistic works (that is, drawings) that have one key characteristic: that of being attached to the human body. While tattoos are in principle protectable under copyright law (and potentially also trade mark and design law!) by the same conditions as any other kind of work, the peculiarity of the medium on which they are impressed may give rise to conflicts between the rights of the tattoo artist in relation to their tattoo and the rights of the person carrying such a tattoo. For example: can a tattoo artist object to the reproduction of their tattoo even if the person carrying it has already consented to the use of their own likeness?
While this question has not yet received an exhaustive answer across Europe, in the USA a court recently ruled that the rights of the person carrying the tattoo prevail over the copyright of the tattoo artist. In this particular case, a videogame developer had already received permission from some high-profile basketball players, including LeBron James, to reproduce their likeness – including their tattoos – in avatars featured in the videogame. The ruling determined that permission was not also needed to clear the tattoo artists’ copyright in relation to tattoos visible on the athletes’ bodies.
Similarly to tattoos, building blocks of internet culture such as memes (examples include “Condescending Willy Wonka” and “Distracted boyfriend”) and GIFs also raise questions under copyright law. From the perspective of trade mark law, it is worth recalling that it is possible to register motion marks like, for example, the moving logo of a well-known telecommunications company or the signature move of a chef.
This is a motion mark in color representing a cinematic sequence with a duration of 3secondsapproximately. The stills in the sequence are spaced approximately 0.5 seconds apart. The initial still of the sequence is located at the upper left corner of the row at the top and the last still is located at the lower right corner of the row at the bottom. The motion progresses from left to right within each row, before moving down to the next row. The whole scene takes place in a kitchen, as it is apparent from the images show ninth stills. The scene describes the movements made by a chef while adding salt to apiece of meat located on a try placed at the height of his waist. The initial still shows a chef standing up, over the piece of meat, looking at it. The chef’s body is placed perpendicular to the piece of meat, where the right side of the body of the chef is near the tray, whereas the left side of his body is distant to the tray. His right arm is above the piece of meat and the fingers of his right hand are all together holding a pinch of salt, over the piece of meat. His left arm is almost besides his torso, whereas his left forearm is in a 90degree angle in relation to his left arm. The second still shows that the chef has moved his torso advancing slightly his right side over the piece of meat. He has raised up his right arm in such a manner in which now it follows the line of his shoulder, horizontally over the tray containing the piece of meat. His right forearm is placed vertically over the piece of meat, where his fingers –now located above and slightly behind his right elbow- are sprinkling salt while the chef lays his head over his shoulder. His left arm has slightly moved away from his torso. Stills third, fourth, fifth and sixth recreate the movement of the fingers of the right hand of the chef at the time of sprinkling salt over the meat, with the peculiarity that the chef stands still with the exception of the fingers of his right hand, which progress the process of sprinkling salt, with the natural effect of opening his fingers in the last two frames, allowing the last remains of salt to fall over the piece of meat, which ends the motion. The rest of the body of the chef barely moves during the process of sprinkling the meat, mostly maintaining the position described in the second still. Color: Black; White; Silver; Light Brown; Dark Brown; Red; Pink; Golden; Ochre; Grey. Trademark registered in Spain by D ET VE ET ÜRÜNLERI GIDA PAZARLAMA TICARET ANONIM SIRKETI in 2017.
Tastes and smells
Unlike ‘objects’ that are perceived through one’s own mechanical senses (sight, hearing, touch), tastes and smells are perceived through chemical senses and are, as a result, highly subjective: the way something smells or tastes to a person may be different to how it smells or tastes to another person. Because of this peculiarity, can tastes and smells be protected by IP?
Insofar as trade marks and copyright are concerned, the answer is very similar: it is not possible to receive protection under either of them if the taste or smell at issue cannot be identified with sufficient precision and objectivity. The CJEU recently confirmed this in a case concerning copyright protection of the taste of a cheese spread.
The road ahead
When we think about IP rights, the focus cannot be limited to ‘traditional’ or ‘conventional’ subject matter: what we may regard as ‘non-traditional’ or ‘unconventional’ IP is an increasingly diverse and relevant group of ‘objects’.
The availability of different IP rights represents an opportunity for those seeking to protect ‘objects’ like those discussed in this article. Nevertheless, since IP rights grant their owners a monopoly, IP offices and courts are and should continue being mindful of the need to balance IP protection with the interests and rights of third parties and the public at large. All this requires, among other things, a thorough and careful examination of the requirements for protection under IP law.