Welcome to the non-traditional Trade Mark Archives

by Dr. Ralf Sieckmann, Patent Attorney

 

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books on nontraditional trade marks


By judgement of the European Court of Justice in RS C-273/00 (Ralf Sieckmann vs Deutsches Patent- und Markenamt) issued on 12. December 2002 it is held that

1. Article 2 of Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks* must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

2. 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.

This would put an end not only to olfactory signs = smell marks, but also to complex sound marks, see decision of ECJ of November 27, 2003 regarding sound marks, holograms, shapeless colors, see decision of ECJ of May 6, 2003, and of decision of ECJ of June 24, 2004, light marks and complex motion marks as well as aroma and haptic marks within the EC in the future.

The overview presented below shows the present status /acrtivities of these non-traditional marks in the main industrial countries, but it is not complete. Any input from readers of these records is welcome. Please contact Ralf Sieckmann at copat@copat.de


BENELUX Intellectual Property Office

The Guidelines for examination of trade marks before the BENELUX Intellectual Property 0ffice dated September 2005 require that Sound marks will be accepted only if they were filed with a musical notation, see Guidelines, page 6, unter item 3.3.
Scent marks will not be accepted at all, see Guidelines, page 6, item 3.4.

Color trade marks will be registred only with a narrow list of goods / services after an acquired distinctiveness has been prooven and if the specific color has been defines in acordance with recogniced international Color index such as pantone, RAL, see Guidelines, page 5, under item 3.2 and page 8, under item 5.4. 


GPTO

Amendment of the German trademark regulation on Oct. 15, 2003. According to the notification of the president of the GPTO no. 8/2003 dated Sept. 3, 2003 sonagrams no more allowed for representing sound marks.


British Patent Office, Trade Mark Registry

The practical amendment notice (PAN) 2/06 replacing PAN 3/03, requires to submit a colour code definition when filing a colour alone trade mark. A filing date will be accorded after a definition of the colour with a cogent description of the color and the international Color code (Pantone ) has been submitted with the office within two months from the filing date. It will be necessary to establish that the colour(s) is distinctive irrespective of the medium on which it appears.


Community Trade Mark Office

Communication No 06/03 of the President of the Office of 10 November 2003 states that the colour codes of color trade marks could be added after the filing date but in general registration of colour trade mark requires prooving enhanced distinctiveness.
http://oami.eu.int/en/office/aspects/communications/06-03.htm


Switzerland

The Swiss patent and trademark office, trademark division, intents to apply the Sieckmann criteria set by the European Court of Justice on the registration of colour and sound marks, see declaration dated The practical amendment notice 2/06 replacing PAN 3/03, requires to submit a colour code definition when filing a colour alone trade mark.August 29, 2003 and March 31, 2004


Intellectual Property 0ffice of SINGAPOR

The Intellectual Property 0ffice of Singapore (IPOS) requires under Chapter 1 of the Trade Mark Examination Guidelines 2006 that only those signs can be registered which could be graphically reproduced, see page 5. Sound marks can be registered when written as musical notation, see page 10, scent marks can not be registered today due to lack of measuring methods for graphical representation, see page 11, and that color trade marks can be only registered when indicating the international color code.


AIPPI

A resolution of International Association for the Protection of Intellectual Property (AIPPI) after discussing the group reports on non-conventionional trademarks (question 181) held on July 2004 that non-conventional trademarks shall not be graphically represented as a prerequisite for registration, but only by means describing or defining said trademark provided said means are clear, precise, easily accessible and intelligible. Information


You will also find some material dealing with and commenting the said ECJ decision and the references referred to in my publication in MarkenR 2001, 236 and WRP 2002, 491. This is to allow Trade Mark Authorities at OHIM to make a decision on true references prooving a necessity to keep smells free in certain area instead of making theoretical conjectures or unprofessional statements as e.g. found in OHIM decision R 711/1999-3, the smell of raspberry, under item 42, 44 et seq. of the reasons.

These non-traditional trade marks refer to

* A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. The language of this provision is identical with Article 4 of the CTMR as well as with Section 8, Subsection 1 and Section3 of the German Trade Mark Act.

 

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Last update March 6, 2007/ WI, 9:15 pm
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