A Motor Bike’s Roar, A Perfume’s Scent and A Bottle’s Shape…. Please Welcome the Trade Marks of the New Age

Leela Baskaran explores the new global trend in trade marks

 

 

INTRODUCTION

The director-general of the Intellectual Property Corporation of Malaysia (MyIPO) recently indicated that it will soon be possible to register and protect non-traditional trade marks such as sound, colour, smell, taste and texture or a combination of two or more of these elements in Malaysia. How will this affect you as consumers and traders?

 

Currently, the Trade Marks Act 1976 defines a mark to include “a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof”. This definition is non-exhaustive and is inclusive rather than exclusive.

 

In practice, some forms of non-traditional trade marks (NTMs) such as colour and shape, although not specifically included in the definition, have been accepted by MyIPO. However, such marks are accepted only when substantial evidence of use and acquired distinctiveness have been submitted. The definition however definitely does not allow for sounds, smells, taste and textures and these NTMs cannot currently be registered as trade marks in Malaysia.

 

 

SHOULD NTMs BE PROTECTED?

What are NTMs and should protection of NTMs as trade marks be allowed? Before addressing these questions we need to first consider the questions – “what is a trade mark?” and “what is a good trade mark?”

 

 

What is a Trade Mark?

A trade mark is any form of sign or symbol which distinguishes the products and services of one trader from those of another. The main function of a trade mark is to identify the trade origin or source of products and services. Besides this, a trade mark can be an indication of a certain standard, quality or character. A trade mark also enables consumers to choose between different products and services and a trader to advertise and market his product and services more effectively.

 

 

What is a Good Trade Mark?

A good trade mark is one which can, from a commercial perspective, perform the functions set out above and also qualifies for strong legal protection. In order to receive such legal protection, the mark must be distinctive of the trade mark owner and not descriptive of the products or services in relation to which the mark is used as well as not otherwise fall within any category of marks which is prohibited from protection under trade mark law.

 

Traders and consumers alike are familiar with the traditional or conventional marks consisting of words, logos, pictures, names or combinations thereof. We are all familiar with marks such as “APPLE” for computers” and “NIKE” and the swoosh design for shoes etc., all of which may be considered good trade marks.

 

 

Non-Traditional Trade Marks

However with the advance of marketing and advertising techniques, we are seeing the emergence of NTMs such as colour, shape or 3 dimensional marks, sound, smell, holograms, taste and texture.

 

You may ask how a colour, shape, sound or smell can function as a trade mark. In short, the answer is, it can if consumers recognize a particular colour, shape (including in 3 dimensions), sound or smell as signifying the source of a particular product or service or being linked exclusively to a particular company which is the source of the products or services.

 

Some examples of such NTMs are the colour “purple” for Cadbury confectionaries, the colour “yellow” for 3M's post-it notes, the shape of the coca-cola bottle, the “lion’s roar” for MGM and the "vroooom" of a Harley-Davidson motorcycle. These colours, shapes and sounds immediately bring to mind a product or service from a particular source and are therefore able to function as trade marks.

 

 

The NTM Debate

Can NTMs be good trade marks i.e. marks which perform the function of a trade mark as an identifier of trade origin and which are eligible to receive strong legal protection? There are some factors which may make it difficult for NTMs to be good trade marks.

 

Firstly, some NTMs such as colour, shape, taste and texture may be dependant on the nature of the product itself or may have a functional purpose or be necessary to achieve a particular functional or technical result. The colour, shape, taste or texture may also perform the function of enhancing the quality, appeal or value of the product. The foregoing functions are different from and to some extent inconsistent with the function of a trade mark i.e. as an indication of trade origin and NTMs which come under these categories should not receive protection as trade marks.

 

Trade mark rights once granted are perpetual as a trade mark registration can be renewed indefinitely. Whereas an industrial design registration which protects the shape, configuration, pattern or ornament of an article which is new and has aesthetic appeal only grants protection for a period of 15 years from the date of application and a patent which protects a new product or process only grants protection for a period of 20 years from the date of filing. Therefore a person who obtains trade mark rights to a shape, taste or smell which may be more appropriately protected as an industrial design or patent may gain an unfair advantage over his competitors.

 

Secondly, unlike conventional trade marks such as words and logo, there is a limited number of NTMs such as shapes and colours. If traders are permitted to monopolize certain shapes and colours then there would a depletion of the stock available for use by the general public and traders.

 

Thirdly, from a practical point of view, there is difficulty in the representation of such marks in any application for registration. There needs to be a degree of certainty as to what exactly the mark registered is, as this will determine the scope of protection and what the public and other traders are restricted from using as a trade mark. How is a shape, sound, smell, taste or texture to be represented with such a degree of certainty in the trade mark application and the eventual publication and registration of the trade mark?

 

 

WIPO's Views

The Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications of the World Intellectual Property Organization (WIPO) has come up with a document in December 2008 which sets out the areas of convergence in relation to the representation of NTMs.

 

In relation to 3 dimensional marks, a clear representation showing one or more view of the marks as well as a description of the mark may be required. For colour per se or a combination of colours, a sample of the colour on paper or in electronic form, a designation of the colour using their common names and recognized colour codes as well as a written description of how the colour is applied to the goods or used in relation to the services may be required.

 

Sound marks may be represented by a musical notation on a stave, or a description of the sound constituting the mark, or an analogue or digital recording of the sound or a combination thereof. No agreement could however be reached in relation to smell, taste and texture marks.

 

Notwithstanding the foregoing, many countries have moved towards registration and protection of NTMs and it cannot be doubted that Malaysia’s move in this direction will be in keeping with the global trend.

 

 

Recent Malaysian Cases

As mentioned earlier, there have already been instances when some forms of NTMs have been accepted and registered in Malaysia.

 

One recent example of a registration for a combination of colours is a registration for the colours green and yellow by B.P. plc in relation to “oils and greases, lubricants; fuels; transmission oils; hydraulic oils”.

 

The representation of the mark shows the layout of a B.P. service station as depicted below and the publication of the mark in the Government Gazette includes the description “the mark consists of the colors green and yellow applied to the exterior surfaces of the premises used for the supply of the goods contained in the specification as exemplified in the representation attached to the form of application” and “the above representation is not simply a label and the representation are merely illustrative of how the mark is used in practice.”

 

With regard to shape or 3 dimensional marks, The Coca-Cola Company has registered the shape of the coca-cola bottle with MyIPO. The publication of the mark in the Government Gazette includes a representation of 3 views of the bottle as depicted below and the description “the mark consists of a 3-dimensional shape of a bottle with the word “Coca-Cola” appearing thereon as shown on the representation on the application form.”

 

It will be interesting to see how the Trade Marks Act 1976 will be amended to accommodate protection of NTMs and whether any restrictions will be put in place to prevent or curtail abuse of such protection.

 

 

LEELA BASKARAN ( This e-mail address is being protected from spambots. You need JavaScript enabled to view it )

 

 

 
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