3D Trademarks and Other Non-Traditional Trademarks – Report on the Joint University of Geneva/INTA Yearly Conference on Intellectual Property

The eleventh edition of University of Geneva’s “Yearly Conference on Intellectual Property” was dedicated to non-traditional trade marks. The Conference was organized by Prof. Jacques de Werra, Dr. Yaniv Benhamou (both University of Geneva) and Prof. Irene Calboli (Texas A&M University), with the support of the International Trademark Association (INTA).

Eric Meier (Swiss Federal Institute of Intellectual Property, FIIP), first up, gave an overview of the FIIP’s practice on non-traditional trade marks. Except for 3D trade marks, applicants seem to have limited appetite for non-traditional trade marks in Switzerland, with fewer than 40 sound marks, a dozen of color marks, and no hologram or motive marks having been registered until now. One of the reasons is the difficulty of registering color and 3D trade marks (no inherent distinctiveness); also Switzerland still requires a visual representation of trade marks, which is currently impossible for flavors and scents.

Marcus Höpperger (WIPO) then provided a perspective on how non-traditional trade marks can be protected at the international level. He placed special emphasis on what national trade mark offices should accept as a representation of a non-traditional mark, referencing what is likely the most important (albeit non-binding) piece of soft law in the area, the 2009 Areas of Convergence on the Representation of Non-Traditional Trademarks. These Guidelines deal with defining minimum standards of what trade mark offices around the world should accept as a sufficient representation of signs. Although nothing would prevent WIPO from technically receiving e.g. a sound file, not all Madrid System members are ready and prepared to receive such types of representations of a mark.

The ensuing discussion revolved around standards and expectations regarding survey evidence, in particular, discrepancies between national standards and the complete lack of published standards in some jurisdictions.

Philipp von Kapff (EUIPO Boards of Appeal) then provided an overview of some aspects of non-traditional trade marks in the EU. The presentation focused on how the reform of EU trade mark law has made the application for certain types of marks easier, stating in particular that “sounds are one of the winners in the EU trade mark law reform”. This is so because the EUIPO has abandoned the visual representation requirement, so that sound or video files (in particular) are an acceptable way of representing a sound or a motion mark. In the last part of his presentation, Mr. von Kapff examined when 3D marks can become distinctive through the addition of a 2D element.

The morning session was rounded off by the US perspective on non-traditional trade marks, provided by Julia Belagorudsky (Fross Zelnick Lehrman & Zissu). Since US trade mark law allows the registration of “anything that can be perceived by the consumer’s five senses”, virtually all types of non-traditional trade marks are registrable – at least in theory. In practice, the functionality doctrine sets an absolute bar to registration that prevents registration of e.g. three-dimensional forms, when the specific shape applied for as a mark has utilitarian advantages.

The afternoon session started with a perspective from the luxury industry, likely one of the heaviest applicants for non-traditional trade marks. Olivia Dhordain (Richemont) focused on distinctive shapes and the "iconization" phenomenon in the luxury industry, providing numerous examples from around the world. Interestingly, she noted that European trade mark offices are often among the most challenging jurisdictions to register such marks. Ms. Dhordain noted that proving acquired distinctiveness may pose a particularly high hurdle for trade mark owners in this context. Further, even once the mark is registered, some actors in the luxury market apparently prefer not asserting their 3D marks for fear of losing them in litigation.

The ensuing discussion dealt with the question whether trade mark law is the right tool to protect three-dimensional shapes. Some of the participants made the point that this should be left to design law. Ms. Dhordain underscored that what 3D marks are protecting is not a mere shape, but the fact that something has become a distinctive sign. What is more, in many countries, trade marks are the only available IP right that can be asserted effectively in the framework of border measures.

If I can smell it, it is distinctive

The focus of the discussion came back to the conference’s home turf with the presentation by Guillaume Fournier (Meyerlustenberger Lachenal), addressing insights gleaned from Swiss court cases. Mr. Fournier noted the peculiarities of Swiss civil proceedings for trade mark infringement and on how different cantonal courts keep relying on their own legal traditions, resulting in surprisingly significant differences when it comes to conducting proceedings. He also emphasized the importance of using unfair competition law in parallel in order to build up pressure on the alleged infringer. He closed by asking rhetorically whether a single specialized trade mark court for all of Switzerland, like the Federal Patent Court, would not enhance the quality of Swiss case law.

In the following presentation, Prof. Calboli laid her cards on the table, stating that she was skeptical about non-traditional trade marks and that the perspective of policymakers and the public interest are not necessarily identical to that of right holders. She asked whether the granting of virtually perpetual monopoly to one right holder on a given shape, color or scent is in accordance with the public policy objectives of trade mark law. Prof. Calboli also pointed to a shift in the understanding of the connection between trade marks and distinctiveness. While we used to learn that a trade mark had to be distinctive, today non-traditional trade marks teach that anything that is distinctive can be a trade mark.

The last presentation by Prof. Martin Senftleben (Vrije Universiteit Amsterdam) placed special emphasis on whether copyrighted works could be protected as non-traditional trade marks and whether monopolizing formerly copyrighted works that are part of the cultural heritage should be allowed. He made the point that such cases should not be resolved by relying only on distinctiveness as a gatekeeper criterion because this solution allows the acquisition of trade mark rights as a result of continuous use in trade. Instead, courts and examiners should broaden the scope of public order and morality as grounds for refusal, following in the footsteps of the EFTA Court decision in the Vigeland case (Katpost here).

The final, engaged discussion between the panel of speakers and mainly industry representatives focused primarily whether the broadening of trade mark protection to non-traditional signs has a measurable effect on innovation (spoiler alert: there were as many answers as respondents from the speakers and the public).