Is it possible to register a sensitive trademark?
To register a sensitive trademark has the purpose of being part of a company’s marketing strategy. That is to say, is to stimulate the consumer’s purchase of a certain product. The high competition in the market makes companies look for new ways to distinguish their products from those of other competing companies, so they are increasingly resorting to the use of non-traditional brands, i.e. those that are perceived by the consumer through any of the five senses.
As we know, there are two types of brands: traditional and non-traditional. Traditional brands are those that can be identified by sight. On the other hand, non-traditional brands, which are the ones we are going to analyze below, are those brands based on tastes, textures, smells or sounds.
To investigate the latter type of marks, we will analyze the consultation made to the Court of Justice of the European Union (hereinafter “TJUE”) by the manufacturer of Heks’nkaas cheese.
Recently the manufacturer of Heks’nkaas cheese asked the CJEU for a preliminary ruling on whether the taste of its cheese could be protected by intellectual property law, i.e. whether its creation could be protected by copyright.
The question is whether the taste of his cheese could enjoy such protection, in other words, whether there could be a kind of sensory copyright. Everything seems to indicate that the CJEU will not grant this type of protection since it would imply the payment of a royalty for the acquisition of any product requesting this protection and, as a consequence, an increase in the price of the products.
The lawyers of the manufacturer of this cheese, faced with a refusal of copyright protection, may apply for the registration of a taste trademark, which raises serious doubts for the following reasons.
The main problem with this type of trademark, as with olfactory trademarks, is that consumers do not perceive both smells and tastes as distinctive signs but as a characteristic of the product.
In addition, subjectivity in the perception of the sign must be taken into account, since not everyone perceives a taste or smell in the same way, which is not the case with visual marks, where this subjectivity disappears. Another difficulty is that in order to perceive the taste of a product, it is necessary to taste it first
Until the publication of the new European Union Trademark Regulation on December 16, 2015, the registration of olfactory marks was not possible due to the requirements, which made it very difficult.
Companies are putting great efforts so that their products are associated by consumers with pleasant aromas, so the removal of the requirement of graphic representation contemplated in this new Regulation, seems to indicate that we are closer to the possibility of the registration of this type of trademarks.
Specifically, the applicant for the registration of an olfactory mark had to meet the following requirements:
Requirement of graphic representation
This requirement was the biggest obstacle for the registration of this type of trademarks. According to the CJEU, the graphic representation of olfactory marks must be clear, precise, complete, easily accessible, intelligible, durable and objective.
Several methods of representation of these signs have been suggested: their chemical formula, their description, the deposit of a sample or the combination of the three methods. On the occasion of the Sieckmann case, the CJEU analyzed them all and concluded that none of them was suitable to represent an odor.
The Court held that the description of a chemical formula is not legible, clear and precise with respect to odor. The Court understood that the odor was not being represented, but the substance.
In addition, the deposit of odor samples is also not accepted since the sample would lose its properties over time and would therefore no longer be comparable in the face of a possible trademark conflict. Furthermore, as regards the verbatim description of an odor, the Court held that a description can be interpreted subjectively, i.e. it can be different from person to person
That the odor does not derive from the nature of the product itself
Another problem associated with the registration of this type of trademark is that consumers do not perceive the odor as a distinctive sign but as a characteristic of the product. The distinctiveness of the product must always take precedence over any other aspect.
An example of a refusal of registration for this reason was the application filed by Chanel to register perfume No. 5 as an olfactory mark. In addition, in the case of odors, these are affected by parameters such as humidity or temperature, which causes them to lose their own characteristics.
However, it should be noted at this point that there are certain olfactory trademarks that have been registered, such as tennis balls with the smell of freshly cut grass manufactured by a Dutch company, or darts with the pungent smell of bitter beer and tires with a floral aroma or fragrance, both registered in the United Kingdom.
Although these trademarks have overcome these obstacles and are registered, the European Union Intellectual Property Office (EUIPO) is not satisfied with their registration
In the field of distinctive signs, the use of sounds is frequent. In the case of sound marks, the requirement of graphic representation is simpler. Most national offices request the graphic representation of the sound mark in a pentagram, although there are other alternatives.
It is not possible to register a generic sound, but it is possible to register a particular manifestation of those sounds, as is the case with the registration made by Metro-Goldwyn-Mayer of the lion’s roar.
t is clear that a breakthrough is taking place in the field of so-called non-traditional trademarks. Increasing competition among companies is causing them to seek alternatives to traditional methods of differentiating themselves in the marketplace.
Perhaps one of the biggest problems in the registration of this type of trademarks is to examine the existence of a possible trademark infringement, since it is necessary to assess the risk of confusion that may exist between them and for this the parameter used is that of the average consumer reasonably informed, contrary to what happens, for example, in the field of patents where the figure used is that of a technical expert in the field.
Letslaw by RSM is a law firm specialized in the protection of intangible assets and trademarks registration, contact us and we will advise you!
Letslaw es una firma de abogados internacionales especializada en el derecho de los negocios.