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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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