TASTE MARK REFUSED TRADE MARK REGISTRATION

More summer fun from OHIM. This time Eli Lilly was the plucky trade mark applicant and the 2nd Board of Appeal was the lucky tribunal. Eli Lilly tried to register the TASTE OF ARTIFICIAL STRAWBERRY FLAVOUR as a gustatory (taste) mark for pharmaceuticals. This met with objections from the examiner based on Articles 7(1)(a) (insufficient graphic representation), 7(1)(b) (lack of distinctive character) and 7(1)(c) (the mark was descriptive of the goods, or one of their characteristics).

Eli Lilly appealed, but without success. Although the examiner eventually waived his objections under Article 7(1)(a), his decision to do so was probably incorrect. Since the examiner had reached his decision, the ECJ had decided the Sieckmann case, holding that the graphic representation requirement is not satisfied for olfactory marks by a description of the odour in written words. The same logic should also apply to gustatory signs, meaning that merely describing the taste in words would not satisfy the graphic representation requirement. However, this didn’t matter to much because the examiner’s objection to the registration of the taste mark Article 7(1)(b) was valid.

In cases such as Libertel (on colour marks), the ECJ and the CFI had found that the purpose of Articles 7(1)(b)-(e) of the CTM Regulation is to prevent a single undertaking from gaining exclusive rights to signs that any trader may legitimately wish to use by registering it as a trade mark. There is a public interest in not unduly restricting the availability of tastes for other traders. Here, granting Eli Lilly exclusive trade mark rights in the taste of artificial strawberries would interfere with the freedom of Eli Lilly’s competitors, who were entitled to add that flavour to their pharmaceutical products to disguises any unpleasant taste their products may have, or simply to make their products taste nice. Additionally, a taste cannot distinguish one pharmaceutical preparation from another, first because a feature that any manufacturer of such goods is entitled to use cannot distinguish between the goods of different manufacturers and also because such a taste is unlikely to be perceived by consumers as a trade mark. Instead, consumers will just assume that it is intended to disguise the unpleasant taste of the product.

The IPKat notes that in Libertel the ECJ in fact said that Article 3(1)(c) (the equivalent of Article 7(1)(c)) specifically protects the public interest in leaving certain signs free for other traders to use, rather than referring to Articles 3(1)(b)-(e) as the Board has done here. This is ironic because descriptiveness is a major objection to taste being a trade mark for a flavoured product, particularly food, yet the Board did not consider it here, even though the examiner did. The IPKat welcomes the outcome of this case because of the uncertainly of the scope of the mark applied for (does artificial raspberry flavour taste confusingly similar to artificial strawberry flavour and does everybody know what artificial strawberry flavour tastes like?) and the common nature of strawberry flavour. Also, it is unclear how a taste can act as a trade mark because consumers usually do not get the opportunity to select their goods according to taste while they are shopping. However, the Board did not categorically reject the notion of gustatory marks. Nonetheless, the IPKat has had to put his application to register the taste of mackerel for the provision of intellectual property services on hold.

Follow these simple instructions to make your own artificial strawberry flavouring
Follow these difficult instructions to make your own artificial strawberry flavouring
Real strawberries here and here
Berry good fun here
Strawberry jam recipe here