TRADE MARK MUSINGS

More lemons

The IPKat would like to thank Udo Pfleghar, Robert Harrison, Tibor Gold and Chris Stothers and Dave Landau (in no particular order), all of whom came to the Kat’s aid in deciphering the Second Board of Appeal’s decision on the registrability of the smell of lemons. Dave writes

A very rough and ready and fast translation of the main parts of the Lemon decision from the OAMI BoA:

The applicant applied for the smell of lemon in respect of soles for shoes and footwear in general. The examiner rejected the application in that did not comply with article 7(1)(a) in relation to article 4 in that the sign described as the smell of lemon could not be represented graphically. The examiner invited the applicant to comment. The applicant replied by referring to case R 156/1988-2 - the smell of recently cut grass. The applicant claimed that the description of the trade mark, together with the indication of the type of mark, identified the mark perfectly. The applicant argued that the Regulation did not establish any specific requirement in relation to the graphic representation of smell marks that differed from that in relation to three dimensional and colour marks. The description of the mark was perfectly suitable for examination , search and registration for interested parties such as OHIM, applicants or potential opponents and the public at large. The smell of lemon is a smell that all the world recognises. The examiner does not allege that he does not know what the smell of a lemon is. The representation allows for the identification of the precise form of the smell. Since the representation is sufficient to understand the trade mark, the mark is capable of distinguishing the goods.

The applicant made comparisons with sound marks for which musical scores are accepted as being a means of graphical representation. The applicant also put in documentation relating to a new collection of shoes with various scents including one of lemon. These emanate from another proprietor.

The applicant requested a speedy resolution to the matter as it was suffering severe prejudice from competitors who were imitating its distinctive sign.

The examiner maintained the objection and the applicant appealed. The examiner made specific reference to the Ralf Sieckmann case.

The BoA stated that the appeal had to be rejected. The description of the mark does not fulfil the legal requirement of being graphically represented. The BoA said that the general question was whether in the case of smell marks is it possible to satisfy the requirement for graphic representation with a verbal description. The response has to be in the negative given that exactly the same question was dealt with by the ECJ in the Ralf Sieckmann case.

The BoA stated that non visible signs such as smell and taste can in theory be Community trade marks. It points out that there is, unlike in some parts of the world, no requirement that the trade mark can be seen. This is confirmed by the Ralf Sieckmann case. Smells, in spite of not being visible, can fulfil the requirement for having a distinctive character and so can be Community marks.

The description of a smell, even though graphic, is not an admissible representation of the sign, of the smell , since it is not sufficiently precise and objective. A description in words is a mere approximation of the smell, it is not sufficiently clear, precise and objective (as per para 70 of Ralf Sieckmann). The BoA rejected that claim of the appellant that the Ralf Sieckmann case should not be applied as the description "balsamically fruity with a slight hint of cinnamon" was not clearly associated to a smell unlike the applicant's mark, that case related to services rather than goods and the use of the trade mark to the services had not been shown. The BoA referred to the clear pronouncement of the ECJ that "in respect of an olfactory sign, the requirements of graphic representability are not satisfied by a chemical formula, by a description in written words, by the deposit of an odour sample or by a combination of those elements". Such a clear legal pronouncement by the highest court in the Community, in such clear and concrete terms, does not allow for any further analysis.

The IPKat reckons the Board is being really rather forthright here. It seems to be clearly stating that a verbal description of an olfactory sign will never be sufficient. This is a departure from the usual approach of not ruling out any type of sign from registration in theory, even though in practice it may be impossible to show an example of a sign that meets the requirements.

Questioning the average consumer

The Daily Telegraph reports that the best way to be good shopping decisions when it come to major purchases is to pay them little attention. Researchers at the University of Amsterdam that found that people made better purchasing decisions when they were distracted after being told about the qualities of the goods than when asked to make the decisions straightaway. Said Prof Ap Dijksterhuis:

"Your brain is capable of juggling lots of facts and possibilities at the same time when you let it work without specifically thinking about the decision. But when you are specifically thinking about a problem, your brain isn't able to weigh up as much information. I sit on things and rely on my gut."

The IPKat points out that this flies in the face of the received wisdom of the ECJ, that purchasers of expensive goods to which they pay particularly special attention during the purchasing decision are less likely to be confused by a potentially conflicting trade mark.