THE TASTE THAT DOESN'T REGISTER; IT'S THOSE d*****d FOREIGN WORDS AGAIN

The taste that doesn't register

The IPKat's friend, trade mark trailblazer Ralf Sieckmann, has drawn his attention to In re N. V. Organon, a recent US Trademark Trial and Appeal Board decision of 37 pages which refuses an application to register a taste as a US trade mark - an orange flavour for antidepressant pills and tablets. Ralf says:

"Although the TTAB primarily rejected the application on the argument that the trade mark is functional (pages 15 et seq) and does not function as a trade mark (i.e. as a source indicator: pp 31 et seq), it added (pp 36 to 37) that there are also practical reasons why a flavour trade mark cannot act as a communicating means before it touches the tongue. The TTAB explains:

Although our decision is based on the analysis set forth above, we are not blind to the practical considerations involved in the registration of flavor marks. Flavor perception is very subjective; what applicant considers to be a unique and distinctive orange flavor may be considered by patients as simply an orange flavor. Moreover, the Office’s examination of flavor marks, not to mention litigation at the Board, would be very problematic.

Further, it is not clear how taste would as a practical matter function as a trademark. A consumer generally has no access to the product’s flavor prior to purchase. A trademark is defined as a word, name, symbol, or device that is used by a person “to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods.” Section 45 of the Trademark Act, 15 U.S.C. §1127. Unlike color, sound and smell, there generally is no way for consumers routinely to distinguish products by sampling them before they decide which one to purchase. Generally, it would not be expected that prescribed antidepressants would be tasted prior to purchase so that a consumer, in conjunction with a physician, could distinguish one antidepressant from another on the basis of taste. Thus, the consumer, in making a purchasing decision involving either a prescribed medication or an over-the-counter medication, is unable to distinguish one pharmaceutical from another based on flavor. Consequently, it is difficult to fathom exactly how a flavor could function as a source indicator in the classic sense, unlike the situation with other nontraditional trademarks such as color, sound and smell, to which consumers may be exposed prior to purchase".

Likewise, Organon's parallel BENELUX application 1 018 650 and CTM application 3 065 539 were finally rejected in 2004 for (inter alia) not acting as source indications (in Europe, "lack of distinctiveness"). A further flavour trade mark application of Eli Lilly for the flavour of artifical strawberry was here might be of interest: see footnote 40, which mentions that the use of fruit flavours, including orange in bitter drug pills, has been common practice for years.

The IPKat is sceptical about taste marks. Anyway, he greatly prefers antidepressant Pils to antidepressant pills ...

It's those d*****d foreign words again

Right: Matratzen Concord bears

It's not often the IPKat misses a trick, but this Practice Amendment Notice from the UK Trade Mark Registry might have slipped past him forever, if it were not for its timely appearance in the World Trademark Law Report. It goes something like this:

"Practice Amendment Notice PAN 12/06 Issued 13 June 2006

This notice affects Examination Practice in relation to Non-English words.

Paragraphs 27 to 27.4 of the Work Manual have been replaced by the text below. This amendment represents a redraft of the current Registry practice.

27 Registrability of non-English words

These guidelines indicate how the Registrar is likely to respond to applications to register non-English words as trade marks where, if words with the same meaning were applied for in English, the application would be subject to an objection on the grounds that the words are descriptive and/or non-distinctive.

Following the European Court of Justice’s (ECJ) judgment in case C-421/04, Matratzen Concord AG v Hukla Germany SA, there are no grounds for refusing registration of trade marks on the basis that they are relevantly descriptive or non-distinctive in a language which is unlikely to be understood by the relevant trade in the UK or by the relevant average UK consumer of the goods/services in question.

Consequently, the registrar will only object to the registration of word marks which are likely to be recognised as a description of a characteristic of the goods or services (or otherwise be descriptive of the goods/services) in the application.

The relevant trade in the UK consists of those in the UK who trade in the goods or services in question. This is most likely to be relevant where the goods are traded in by specialists. For example, a pharmacist may recognise the descriptive meaning of a Latin name even though an average consumer of pharmaceuticals may not. Similarly, a trader in wines is likely to have a better understanding of French wine descriptions than the average end consumer of those goods.

27.1 The Most Commonly Understood European Languages

In general, the most widely understood European languages in the UK are French, Spanish, Italian and German. The majority of UK consumers cannot be assumed to be fluent in any of these languages, but most of them will have an appreciation of some of the more common words from these languages, particularly common French words. So it may be assumed that the meaning of ‘Biscuit pour Chien’ (dog biscuits) will be known to the average UK customer for dog biscuits. Similarly, it may be assumed that traders in and/or average UK consumers of cosmetics (who will be accustomed to seeing French descriptions on the packaging of cosmetics) will know the meaning of ‘lait’ (milk) and will be able to decipher the meaning of ‘Lait hydratant’ as being moisturising milk (or similar).

27.2 Non English Descriptions which are most likely to be Understood

Again in general, the average UK consumer is far more likely to be familiar with the non-English name of a product or service, or the local name for its geographical origin, than he is she is with the non-English words which describe other characteristics of the product or service. For example, the average English speaking consumer of wine would know that ‘Bourgogne’ is the French word for the region known in the UK as ‘Burgundy’ and would also be likely to know that ‘vin rouge’ means ‘red wine.’ Similarly, the average consumer of olive oil is likely to know that ‘Toscano’ is the Italian word for the region known in the UK as Tuscany. Consequently, these names are not registrable for wine and olive oil, respectively.

27.3 Non-English Words which resemble English Descriptive Words

The more closely a non-English descriptive word resembles its English equivalent, the more likely it is that its descriptive significance will be understood by the consumer. So, for example, the Italian words ‘Caffe Fresco’ should be rejected as a trade mark for coffee because the average UK consumer of coffee would be likely to see that it simply means ‘fresh coffee’.

27.4 Further Considerations which apply to Non-English Descriptive Marks for Services

Section 3(1)(c) is directed at signs which may serve, in trade, as designations of goods or services. Goods are known to move from one territory to another. Non-English words are therefore inherently more likely to be taken as descriptions used in the UK in relation to imported goods than is the case with most services. Consequently, with certain exceptions, such as travel, transport and language services, non-English words may be registrable for some services even where the meaning of the words would be apparent to the relevant average UK consumer. For example, the use of ‘Pret a Manger’ (ready to eat) in relation to a catering service provided in the UK is unlikely to be regarded by the trade as simply descriptive use, even if they know what the French words mean.

27.5 Goods or Services aimed at Minority Groups

Where by their very nature, the average consumer of end user of the goods in the application is far more likely than the average UK consumer to understand the language of the mark, this should be taken into account in determining whether the mark is caught by Section 3(1)(c) of the Act.

For example, the mark خ IMAR (an Arabic word – YASHMAK is the English) would not be registrable for yashmaks in Class 25 because this would be a normal way for traders of these goods to market them because they are primarily used by the Arabic speaking community. The same would apply if the application includes more general descriptions of the same goods, such as ‘clothing.’ This sort of point is most likely to arise in relation to marks for foodstuffs and drinks in Classes 29-32 and clothing in Class 25.

27.6 Non-English Words which have become customary in the Current Language or in the bona fide and Established Practices of the Trade.

Non-English words which have become generic in the trade in the goods or services (by customers or traders) are excluded from registration under Section 3(1)(d) of the Act. So the German word ‘auto’ is not registrable for motor cars of their parts and fittings, or related services. Nor is the Italian word ‘panini’ for sandwiches.

27.7 Non-English words which are Devoid of any Distinctive Character

The Welsh language has equal status to English in Wales. For the purposes of Section 3(1) of the Act, trade marks consisting of words in the Welsh language will be treated in the same way as trade marks consisting of the equivalent English words. Save for the circumstances described in the paragraph above, it should rarely be necessary to raise an objection to a non-English word under Section 3(1)(b) alone.

Prejudice point 1: The IPKat admires the Trade Mark Registry's penchant for providing apt examples for the benefit of its examiners (and applicants). But he wonders whether a Welsh language word might scrape through to registration where (i) although it is totally descriptive, it is not a word borrowed from English but a genuine Welsh word and (ii) the goods or services for which registration is sought are targeted at English-speakers only.

Prejudice point 2: Merpel wonders why people always go on about dog biscuits (biscuits pour chien) but make so little fuss of cat biscuits (biscuits pour chat) ...