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Non-traditional
trademark, also known as a non-conventional
trademark is any type of trademark which does not belong to a
pre-existing, conventional category of trademarks, and which is
often
difficult to register, but which may nevertheless fulfill the
essential
trademark function of uniquely identifying the commercial origin
of
products or services.
The concept of non-traditional
trademarks is an innovative concept as it introduces an entirely
new family of marks discrete and distinct from the traditional
trademarks. A trademark ordinarily comprises of a device, brand,
heading, label, ticket, name, signature, word, letter, numeral,
shape of goods, packaging or any combination thereof and a general
perception about it is that it is a static, two-dimensional word,
design or logo used to identify a product or service . But this
family of Non-traditional trademarks on
the
contrary comprises of a number of different types of trade marks
which
do not belong to the conventional category, of words, numerals,
pictorial and logo marks, or any combination of these marks, and
yet
serve the essential purpose of a trade mark by identifying the
products
or services as being from a particular undertaking.
Non-conventional
trademarks may therefore be visible signs (eg. colours, shapes,
moving
images, holograms), or non-visible signs (eg. sounds, scents,
tastes).
As such, non-traditional trademarks comprise of marks based upon
sound,
texture, three-dimensional shape, taste and smell and following
members
comprise it:
1. Colour marks
2. Sound marks
3. Smell/Scent/Olfactory marks
4. Shape marks
5. Moving Image marks
6. Holograms
7. Gesture marks
8. Taste marks/Gustatory marks
9. Feel marks/tactile marks
10. Celebrity marks
11. Digital marks
12. Trade Dress
These trademarks are exceptional and unique in nature because
unlike
their traditional counterparts, they are sometimes non-ocular eg:
sound,
smell, feel and taste; some are not static like moving image marks
and
digital marks; and others such as gestures and holograms, which
have
revolutionized both the fields of trademark law and marketing.
Some of
these have been more widely accepted in recent times as a result
of
legislative changes and the broad-mindedness of the judiciary,
which
have cumulatively led to the expansion of the definition of the
term
'trademark'. The definition of the term ?trademark? varies from
nation
to nation. A few countries like United States of America, most
countries
forming the European Union like Germany, the Benelux countries,
United
Kingdom, etc. have given recognition to non-traditional mark
thereby
including colours, sounds, smells, etc. in their definitions. Some
countries on the contrary have chosen to not make amendments to
their
trademark laws to include these marks and are still restricted
only to a
static, two-dimensional trademark.
The International scenario on
the
contrary is rapidly changing. International treaties, Documents,
Directives dealing with intellectual property, such as the
Agreement on
Trade-Related Aspects of Intellectual Property Rights, NAFTA
(North
America Free Trade Agreement), the EU Harmonization Directive and
the EU
Regulations, are giving recognition to non-traditional trademarks,
in
one form or the other.
Besides being internationally recognized, non-traditional
trademarks
have been accorded the same status by the national laws of various
nations, through both legislations and the efforts of the
judiciary as
has been briefly discussed above. Like for instance in the United
Kingdom, colours have been granted trademark protection when used
in
specific, limited contexts such as packaging or marketing. The
particular shade of turquoise used on cans of Heinz baked beans
can only
be used by the H. J. Heinz Company for that product. In another
instance, BP was granted the exclusive right to use green on signs
for
petrol stations. In the United States also, it is possible, in
some
cases, for colour alone to function as a trademark. Originally,
colour
was considered not a valid feature to register a trademark
Leshen
& Sons
Rope Co. v. Broderick & Bascom Rope Co. . Later, with the passage
of the
Lanham Act the United States Supreme Court in the case of
Qualitex
Co.
v. Jacobson Products Co. , would rule that under the Lanham Act,
subject
to the usual conditions, a colour is register able as a trademark.
Other
marks like sounds are register able in many countries.
Although these possible trademarks have not yet reached a high
acceptance among lawyers, jurists and the courts, they are of
common use
in marketing and practitioners are familiar with the sensory signs
as an
essential part of an innovative trademark and product strategy.
Thus all
sensory signs such as audible, visual, gustatory, tactile and
olfactory
have become part of such developments. These non-traditional
trademarks
go beyond the simple words and designs that businesses have long
used to
distinguish their goods from those of other companies. Some
examples of
registration of non-traditional trademarks are like the floral
scent of
thread, the colour pink has been registered for insulating
material and
a pattern of chimes has been allowed registration for the
broadcasting of
television programmes. My third issue deals specifically with the
Colour
Trademarks and it has been explained in detail under the
subsequent
sub-heads.
Colour Trademarks
Due to the invention of colour television and the new
possibilities in the print industry, colour has increased in
importance in both the advertising and the packaging industry.
Businesses pay more attention to colour as it can have more effect
on sales because people have colour preferences and they also
sometimes associate it with their culture. For instance the colour
black represents evil in western countries, red is a symbol of
luck and happiness in China, etc.
Thus colours and
colour
combinations play an important role in distinguishing products in
the
marketplace, and are particularly useful where consumers do not
easily
understand traditional trademarks. This could be due to low
literacy
rate in that area, or because of the reason that the traditional
trademark is written in a different language altogether
incomprehensible
by the consumer. So colour marks assume added importance because
they
overcome the language or cultural barriers faced by traditional
words or
device marks. In such circumstances a colour which has long been
associated with a particular product only, sometimes tends to
inform the
illiterate and ignorant consumer about its source.
For instance the colour purple
can be recalled as the colour of Cadbury Chocolate even if the
words Cadbury Chocolate are written in Chinese, Japanese or
any
other language. It is thus axiomatic that when a mark or a sign is
capable of identifying its source and indicates a connection in
the
course of trade between the goods or services and some person
having the
right, either as a proprietor or by way of permitted user, to use
the
mark, whether with or without any indication of the identity of
that
person, the mark can be elevated to the status of a registered
trademark. As a result businesses try to choose colours with a
maximum
psychological appeal, visibility and symbolism to represent their
products.
A Single Colour mark though known to all and sundry previously,
has
actually come to be recognized as a potential trademark, lately,
therefore, it can be called as a non-traditional trademark. A
Single
Colour has been considered registrable as a feature of a mark .
Over the
last few years the number of applications for registration of
colour
marks has been swelling. Colour marks found their way to the
mainstream
because of the dire need for more innovative concepts to grab the
attention of the consumers and mesmerize them. Moreover, it is a
proven
fact that people get more attracted towards things that are
colourful
and hence look beautiful.
Exploiting this predisposition of human
beings, companies and large businesses have introduced either colours
per se or a combination of colours for making their products,
attractive, conspicuous and eye-catching. The legal aspect to this
strategy is that the colours per se should be protected by the
businesses in their own name as their legitimately protected
trademark,
but their registration is a Herculean task for the companies due
to the
numerous and diverse formalities and pre-requisites standing in
the way
of final registration.
A single colour considered in the abstract, is capable of becoming
a
trademark, but it faces certain obvious hurdles in order to get
itself
registered. It has been held that a single colour is never
inherently
distinctive . Unless the mark is for very specific goods or for a
very
specific clientele, or comprises a colour or shade which is
extremely
unusual and peculiar in the relevant trade, it cannot have
inherent
distinctiveness.
The examination of single colours thus requires
very
careful analysis since the effect of acceptance is to bar
competitors
from using those colours. Accordingly, to seek registration of a
colour
mark on the Principal Register, it must be shown that the colour
mark in
question has acquired distinctiveness. The courts and the
Trademark
Office examine the following several factors in attempting to
ascertain
whether a single colour has achieved secondary meaning:
a) Extent of Third Party Use
b) Sales and Advertising
c) Use of Trademark Legend
d) Promotional Items
e) Sales Calls
f) Monitoring Competition
g) Consumer Studies
h) Unsolicited Media Coverage of the Product that Highlights the
Colour
in question
i) Consumer Letters and Inquiries
According to Section 45 of the
Lanham Act, 1946 the term trademark
includes ?any word, name, symbol or device, or any combination
thereof:
(i) used by a person, or
(ii) which a person has a bona fide intention to use in commerce
and applies to register on the principal register established by
this chapter, to identify and distinguish his or her goods,
including a unique product, from those manufactured or sold by
others and to indicate the source of the goods, even if that
source is unknown.
Further the preamble of section 2 of the Lanham Act states that:
[n]o
trademark * * * shall be refused registration on the principal
register
on account of its nature,? unless one or more specific exceptions
to
register ability set forth in that section apply. * * *
The definition of a trademark under section 45 does not patently
identify colour mark as a trademark, but it also does not
specifically
exclude it. This statutory definition is broad enough to encompass
non-traditional trademarks and that existing statutory and common
law
principles would suffice to ensure that only those non-traditional
trademarks that meet the essential requirements of a trademark are
monopolized. Through legislation and through several decisions,
the
Courts of United States of America have recognized, registered and
protected colour, both as a combination and a colour per se. The
jurisprudence under the Lanham Act developed in accordance with
the
statutory principle that if a mark is capable of being or becoming
distinctive of applicant's goods in commerce, then it is capable
of
serving as a trademark. Section 2 of the Act further clarifies the
position by stating that no trademark shall be refused
registration on
account of its nature unless one of the stated exceptions listed
in the
statute applies. And since a colour does not figure out in any of
the
exceptions, its registerability cannot be per se challenged.
Previously, the scope of the
term trademark was restricted to
traditional forms of trademark only, but gradually, under the
Lanham
Act, trademark registration became available to many types of
previously
excluded indicia, one being a single colour mark. Change was
gradual and
evolutionary. It was previously declared to be non-registerable in
a
catena of judgments in the United States of America, but later on
came
to be recognized as a trademark. The mark has indeed had a
chequered
history and its progress to its current stature shall be depicted
through two phases- First phase will show the position before the
decision in the case of Qualitex Co. v. Jacobson Products Co.
Inc., and
the subsequent phase would demonstrate the position after this
decision.
Phase
I: Position Before The Qualitex Decision
Initially, a colour mark was not considered as a trademark. The
rationale underlying the conception was that it?s a weak mark as
it
cannot identify and indicate the source of the goods to the
consumer.
This can precisely be perceived from a catena of judgments, the
earliest
of which is of Leshen & Sons Rope Co. v. Broderick Jacobson
Products Co.
, wherein the court refused registration to a single colour mark
saying
that it could not serve the function of a trademark and so was not
capable of registration. In a similar case of
Diamond Match Co. v.
Saginaw Match Co. , also the court refused registration to a
single
colour on the same rationale as stated above. Thereafter, in 1949
following the same ideology, in the case of Campbell Soup Co. v. Armour
& Co. , the Court of Appeals denied the rights in the familiar
horizontal red and white Campbell's Soup labels to the proprietor.
In all the three aforementioned cases, ostensibly, the court got
swayed by the rationales of Colour Depletion
or Colour Monopolization and
Shade Confusion
Former, connotes that already there are less
easily
discernible colours and once all are taken in an industry, the new
entrant, may be deprived of a needful element of competition. In
other
words, if a valid trademark registration is given to a colour,
then the
proprietor of it would enjoy an exclusive right to use that
colour,
thereby preventing any other from using it. This in turn would
lead to a
depletion of colours. The second justification given by the Third
Circuit court means that the single colour would create confusion
in the
minds of consumers as there would be others also who would be
using a
similar shade to market their products. This might lead the
consumers to
believe that the goods of other manufacturers are those of the
proprietor of the colour mark, who is using a similar shade.
The traditional rule, however, did not absolutely bar the
registration
of colours. It allowed the registration of a colour only if it was
an
integral part of an arrangement of colours, symbols or words, but
a
colour per se was not so allowed.
Court in the case cited in the
previous paragraph clearly stated, if color be made the essential
feature, it should be so defined, or connected with some symbol or
design, that other manufacturers may know what they may safely
do.However, there was a twist in the law through the case of In Re
Owens-Corning Fiberglas , in which the Court of Appeals for the
Federal
Circuit broke with this tradition, declining to state a general
rule
against registration of colours as marks, stressing that each case
should be judged on its particular facts. In this case the court
found
that the colour pink could be registered as a trademark for the
applicant's fibrous glass residential insulation.
The court noted
that
the colour had been arbitrarily chosen and served no utilitarian
purpose
in connection with the product. It elucidated that while the
colour by
itself was not inherently distinctive, it had acquired a secondary
meaning i.e. the public had come to associate the colour as an
indication of origin. This was due to the applicant's
pink
panther advertising, which emphasized the colour of the product. But even
after
this judgment, during the following decade, there was a marked
disagreement amongst the courts on this issue. While the Court of
Appeals for the Eighth Circuit aligned itself with the Federal
Circuit's
view, the Seventh and the Ninth Circuits refused to recognize
colour
alone as a trademark. This ideology thus kept on haunting the
registration of single colour trademarks till the landmark
judgment of
the U.S. Supreme Court in the case of Qualitex Co. v. Jacobson
Products
Co. Inc.
Phase
II: Position After The Qualitex Judgment
In the case of Qualitex Co. v. Jacobson Products Company, Inc. ,
the
Petitioner is the Qualitex Company that had been using a special
shade
of green-gold colour to the dry cleaning press pads that it had
been
manufacturing since 1950's. After the respondent Jacobson Products
(a Qualitex rival) began to use a similar shade on its own press pads
in
1989, Qualitex registered its colour as a trademark in year 1991
and
added a trademark infringement count to the suit that it had
previously
filed challenging Jacobson's use of the green-gold colour on the
press
pads. Qualitex won in the District Court, but the Ninth Circuit
set
aside the judgment on the infringement claim because, in its
opinion the
Trademark Act of 1946 (Lanham Act) did not permit registration of
colour
alone as a trademark. Then the writ of certiorari was filed in the
United States Supreme Court by Qualitex Co., which reversed the
decision
of the Ninth Circuit. Breyer, J., expressing the unanimous view of
the
court, held that,
(1) the Lanham Act permits the use of a colour, pure and simple,
as a trademark
(2) a colour may sometimes meet the basic legal requirements for
use as
a trademark, and
(3) no arguments were presented that would justify a special legal
rule
preventing colour alone from serving as a trademark.
The court observed that the Lanham Act gives a seller or producer
the
exclusive right to "register" a trademark and to prevent his or
her
competitors from using that trademark. Both the language of the
Act and
the basic underlying principles of the trademark law would seem to
include colour within the universe of things that can qualify as a
trademark because the language of the Lanham Act, 1946 describes
that
universe in the broadest of terms. It stipulates that trademarks
"include any word, name, symbol, or device, or any combination
thereof."
Since human beings might use as a "symbol" or "device" or almost
anything, all that is capable of carrying meaning, this language,
read
literally, is not restrictive. The courts and the Patent and
Trademark
Office have also authorized for use as a mark a particular shape
of a
Coca-Cola bottle , a particular sound of NBC's three chimes , and
even a
particular scent of plumeria blossoms on sewing thread . So if a
shape, a sound, and a fragrance can act as symbols why, one might
ask, can a colour not do the same.
Just as a single colour mark
has found place in the Trademark law of United States of America
through judicial pronouncements, it has been successful in making
its presence felt in the Trade Mark law of United Kingdom too.
Section 1 of the U.K. Trade Mark Act, 1994, stipulates that a
trademark means any sign capable of being represented
graphically
which is capable of distinguishing goods or services of one
undertaking
from those of other undertakings and that a trademark may, in
particular
consist of words (including personal names), designs, letters,
numerals
or the shape of goods or their packaging. The definition though,
does
not expressly make a mention of colour as a trademark, but it
obviously
does not lead to the conclusion that colour has been excluded from
it.
Similar to the definition of a trademark under the Lanham Act,
1946,
this definition too is inclusive and the United Kingdom has indeed
come
to recognize and register colours as trademarks, the glaring
examples of
which are- the colour silver in connection with anthracite
briquettes,
the colour red applied to the pin of a shackle, three red bands on
the
handle of tennis, badminton, and squash rackets and the colour
green
applied to the exterior surface of a building.
Such recognition and acknowledgment of the colour mark can be
attributed
to a few international agreements and treaties. One such very
important
agreement is the Agreement on Trade-related Aspects of
Intellectual Property Rights (hereinafter the TRIPS Agreement), which was
approved
on behalf of the European Community by a Council Decision .
Article
15(1) of TRIPS identifies the scope of a trademark as, Any sign,
or any
combination of signs, capable of distinguishing the goods or
services of
one undertaking from those of other undertakings, shall be capable
of
constituting a trade mark. Such signs, in particular words
including
personal names, letters, numerals, figurative elements and
combinations
of colours as well as any combinations of such signs, shall be
eligible
for registration as trade marks. Where sings are not inherently
capable
of distinguishing the relevant goods or services, Members may make
registerability depending on distinctiveness acquired through use.
Members may require, as a condition of registration, that signs be
visually perceptible. This definition thus indicates that any
sign
that is capable of distinguishing the goods or services of one
undertaking from those of other undertakings, that is either
inherently
distinctive or in the absence of inherent distinctiveness, has
acquired
distinctiveness and can be visually perceived, shall be capable of
constituting a trademark. To further substantiate the
acknowledgment of
colour mark as a trademark, Article 2 of the Council Directive
(89/104/EEC) of December 1988 is worded as follows:
A trade mark may consist of any sign capable of being represented
graphically, particularly words, including personal names,
designs,
letters, numerals, the shape of goods or of their packaging,
provided
that such signs are capable of distinguishing the goods or
services of
one undertaking from those of other undertakings.
Article 3 of the Directive, headed Grounds for refusal or
invalidity
provides:
The following shall not be registered or if registered shall be
liable
to be declared invalid:
(a) signs which cannot constitute a trade mark;
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications
which
may serve, in trade, to designate the kind, quality, quantity,
intended
purpose, value, geographical origin, or the time of production of
the
goods or of rendering of the service, or other characteristics of
the
goods;
(d) trade marks which consist exclusively of sings or indications
which have become customary in the current language or in the bona
fide and established practices of the trade;
Nowhere in the above-mentioned legislative provisions is a colour
mark
excluded, but still there is need to examine this question in the
light
of judicial pronouncements. This extreme scenario was thus put
before
the Court of Justice in the case of Libertel Groep BV v.
Benelux-Merkenbureau . Though this case was not decided by a U.K.
Court,
yet it has an immense significance and bearing on the issue being
discussed currently. It being a landmark judgment dealt with the
various
aspects/issues involved in the registration of a single colour
mark. It
clearly and emphatically acknowledged the requirement of
distinctiveness, either inherent or acquired of the colour mark
and said
that such an assessment should take the interests of third parties
into
account.
As regards the pre-requisite of graphical representation, the
court
cited the judgment of Sieckmann's case wherein the principle of
graphical representation was elucidated by stating that it should
be clear, precise, self-contained, easily
accessible, intelligible, durable and objective. In this case, Libertel
had applied for the registration of the colour orange per se and
in the box for reproducing the trademark, the application form
contained an orange rectangle and in the space for describing the
mark it contained, the word orange
without reference to any colour code. The court held that a mere
sample
of a colur is not durable enough, as it may fade. In other words,
a
colour sample on its own would not satisfy these criteria because
it
would be prone to deterioration. And it may also change slightly
depending on the background on which it is printed or put. Thus
the
sample coupled with the verbal description and the internationally
recognized colour identification code of the colour should be
stated in
the application.
The international colour identification code such
as
the Pantone® system, RAL, etc. could be acceptable for these
purposes.
Whilst protecting the registered single colour marks, unregistered
colour marks have also been protected under the theory of passing
off.
However, the Court also noted that it was legitimate to take into
account the desirability of keeping available colours for use by
competitors operating within the same field. Whilst in principle a
colour per se may have sufficient distinctive character to be
registerable, members of the public would not necessarily view a
colour per se in the same manner as a word or figurative mark. As
such, the Court stated that in the case of an application for a
colour per se, it was inconceivable that such a mark would be
deemed distinctive, save in
exceptional circumstances and particularly where the number of
goods or
services for which the mark is claimed is very restricted and the
relevant mark is very specific.
From this it can be deduced that there is no blanket embargo on
the
registration of a single colour as a trademark, according to the
courts
of United Kingdom. As consumers are not in the habit of making
assumptions about the origin of goods based on their colour, or
the
colour of their packaging, in the same way they do with a word or
figurative mark, a colour by itself is not normally inherently
capable
of distinguishing the goods of a particular undertaking. However,
a
colour can acquire distinctiveness through use after the normal
process
of familiarizing the public has taken place. When assessing
distinctive
character, the court must make the examination by reference to the
actual circumstances of use and not simply in the abstract.
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Single
Colour Mark: 
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The
author can be reached at:
neetisuri1985@legalserviceindia.com /
