KEELING REGISTERS A NOTE OF CAUTION ON UNUSUAL TRADE MARKS IN EUROPE

OHIM Board of Appeal member David Keeling delivered an entertaining and highly sensible talk on unconventional trade marks to the Competition Law Association in London last week (writes Jordgubbar, an IPKat mole). Keeling contrasted various successful and unsuccessful attempts to register ‘non-traditional’ or ‘unconventional’ signs such as 3-D marks, colour marks, olfactory marks, gustatory marks, sounds marks, slogans, action marks, holograms and position marks. The message was: “look for an underlying consistent train of legal reasoning and you’ll be disappointed”. By juxtaposing “accepted” and “refused” signs for which Community trade mark (CTM) registration had been sought, Keeling left the clear impression that there was no certainty in this area and that potential CTM applicants might as well be advised to “have a go”.

Keeling warned that two big hurdles facing applicants for unconventional marks are (i) graphical representation of the sign and (ii) distinctiveness (Article 2 of the Trade Mark Directive and Article 4 of the Community Trade Mark Regulations). And don’t forget public policy considerations -- granting authorities don’t usually like to grant a potential monopoly right over a sign where a patent or design application may be more relevant, particularly given the potential life of a trade mark.

In conclusion Keeling stated that, with the exception of applications to register smell or taste marks, which seem doomed to fail, the jurisprudence of the European Court and Court of First Instance suggest that registration may be available for many types of unconventional marks. The most common reasons for the more unconventional marks failing to meet the criteria for registration were lack of distinctiveness and difficulties in graphically representing signs. Even if a sign did overcome these obstacles and was registered, their scope of protection would usually be very narrow.

The IPKat welcomes David Keeling’s candour in addressing the consistency of OHIM decisions and the likelihood of an applicant succeeding in obtaining registration. The conceptual problems raised by these trade mark oddities are not inconsiderable and, although such marks are infrequently applied for and often rarely used in commerce, the difficulties they cause reflect fundamental issues in trade mark law, issues such as (i) what a trade mark truly is, (ii) how do you know what the applicant has registered and (iii) how can you determine the scope of protection which registration confers.

Leading European cases on the registration of shapes: Procter & Gamble v OHIM (soap shape, 16 February 2000); Philips v Remington ECJ judgment of 18 June 2002 (shape of shaver heads); Linde, Winward and Rado (ECJ judgment of 8 April 2003: 3-D fork-lift truck); Procter & Gamble v OHIM (CFI (19 September 2001 (shape of a washing tablet) and Unilever v OHIM (5 March 2003: another shape of a washing tablet); DaimlerChrysler v OHIM (6 March 2003: shape of a car radiator grill).
Cases on the registration of colour marks: Libertel (ECJ Judgment of 6 May 2003), KWS Saat v OHIM (9 October 2002)
Smell and taste marks: Sieckmann (ECJ, 12 December 2002), Eli Lilly & Co.’s Application (OHIM Board of Appeal, 4 August 2003, taste of artificial strawberries for pharmaceutical products)
Sound marks: Shieldmark v Kist (3 April 2003, Advocate General’s Opinion, ECJ).