When not to file a trade mark application
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Unconventional Trade Marks
Trade marks traditionally take the form of words or an image, or a combination of the two, and by far the majority of registered trade marks fall into this category. But it needn’t be this way...
UK Trade Marks legislation tells us that to be registrable, a trade mark must be capable of being represented graphically. Although this tends to favour text- or image-based signs, the 1994 Act explicitly allows the registration of other formats, provided they satisfy the usual criteria for registration. Sounds, shapes, colours, smells and even holograms are all fair game, and are not subject to different or more stringent criteria for registrability.
In practice, however, protecting an unconventional trade mark can be complicated, and the UKIPO has accepted relatively few for registration. At the time of writing, there is just one olfactory, or smell, trade mark on the UK register: registration no. 2000234 covers ‘flights for darts’ and is represented by the following text ‘THE MARK COMPRISES THE STRONG SMELL OF BITTER BEER APPLIED TO FLIGHTS FOR DARTS’. The main difficulty with marks such as these is how they can be represented so that they are perceived consistently by the consumer, and the scope of the registered right can be identified. In the above example, the words conjure up a reasonably precise image (or indeed, smell), thus satisfying basic criteria for registrability. Compare that registration with this application for bubble bath, which was – unsurprisingly – refused by the Swedish registry. Any reader of this article who can work out what the applicant wanted to protect, please do get in touch!
Sound marks fare rather better, which most likely reflects the ease of representing a sound using standard musical notation, at least for sounds that comprise a sequence of notes. The reproduction of written music will always give the same sequence of notes in the same key and at the same tempo and rhythm, which means that the eventual registered right is consistent, predictable and identifiable. Other ways of representation allow the registration of different kinds of sound, for example, spectrograms are commonly used to represent words and phrases, one example being a EU registration granted for ‘The sound of a fictitious character saying the word ‘simples’’, accompanied by a sound clip and spectrogram image . Again, the way in which the trade mark is represented means that consumer perception will be consistent and predictable, and the scope of the registered right will be clear.
Motion marks are increasing in popularity. As with all trade marks, provided an easily accessible visual representation is available that identifies the scope of the registered rights, and the right is consistent and predictable, there is no reason why registration should be denied. UK registration number 3393178 is a good example of what is possible, represented with a short video clip and the (rather detailed) accompanying description ‘The mark is a short sequence rapid pace physical motion illustrated by a human body. It is comprised of 16 steps whereby the lower part of the body has one leg jumping up and down throughout the sequence and the other going in a back and forth motion by bending with the bottom of the foot being pointed at the back direction of the body and then being raised straight at a 60 degree angle at the front direction of the body. Throughout the sequence both hands are in the form of closed fists. However aside from that, in the first half of the sequence the upper part of the body has both arms accompanying the motion of the the non jumping leg by raising both elbows and bending the arms towards the back direction of the body when the non jumping leg is moved towards the back direction of the body and then both arms are straightened downwards at the front direction of the body along with the non jumping leg that is being raised straight at a 60 degree angle. In the second half of the sequence the upper body has the arm on the side of the non jumping leg being bent with the closed fist being pointed upwards in a way that mimics the opposite direction of the non jumping leg when it moves back and forth towards the front side of the body and the back side of the body’.
In summary, and as it becomes increasingly difficult to find empty space on an ever more crowded trade marks register, the freedom to think creatively and adopt unconventional trade marks might ease the problems with identifying and occupying that space. While trade marks that aren’t text or images won’t work for all businesses, they should certainly be considered as a modern alternative in branding.
If you would like advice on trademark matters, whether conventional or unconventional, please do not hesitate to contact us.