Non-Conventional Trade Marks: Scents, Tastes and Sounds

-

 


Non-Conventional Trade Marks: 

Scents, Tastes and Sounds


Grace Bhagwandeen

LLB LLM LEC

and

Brandon Jadoonanan

LLB LLM LEC BA BSc


Introduction

Non-conventional marks are a new category of trademarks which do not fall under the traditional types of trademarks. These non-traditional marks include sound, scent, taste, motion and texture. The protection of non-conventional marks is a hotly disputed matter in the law. The approaches in the EU and the Caribbean differ, since the EU has removed the need for graphical representation while the Caribbean has retained this requirement. Under the EU approach, the mark must satisfy the Sieckman criteria,[1] i.e. the mark is clear, objective, precise, self-contained, durable, intelligible and easily accessible. After this criteria is met, non-conventional marks can be registered under the EU approach. Notwithstanding that the Sieckman criteria is recognised in the Caribbean, the trademark legislation in Trinidad and Tobago does not follow the EU approach. Consequently, the issue of registering non-conventional marks in Trinidad and Tobago and the Caribbean becomes problematic. This article pays special emphasis to scent, taste and sound marks, and an analysis of the grey areas in the law are explored herein.


Analysis 

In the Caribbean, non-conventional marks must be capable of graphical representation in order to be filed at the Intellectual Property Offices (IPOs). Herein resides the difficulty in approaches as the EU and other territories have removed such, making it easier to register. However, the IPOs within the Caribbean have retained the need for graphical representation and do not yet accept audio files (sound marks), swatch samples (scent marks), gif files nor videos (motion marks) nor taste marks. As such, the IPO determines each matter on an individual basis, if the submitted representation of the mark complies with the definition of a trade mark and meets the criteria for registrability as set out in the requisite legislation of that particular territory. 

 

Smells

This is one of the more problematic marks. Bently and Sherman[2] highlighted the fluid nature of smells as there was a significant period of uncertainty, with the Office for Harmonization in the Internal Market (OHIM), which is now the European Union Intellectual Property Office (EUIPO) which surprisingly stated that a verbal description of a smell was sufficient.[3] In Sieckmann, the Court of Justice held that the smell of cinnamon would not be adequately graphically represented by verbal representation due to lack of the ability to be “ sufficiently clear, precise or objective”. The Court also alluded that a deposit of a sample would not amount to graphical representation, be durable nor stable and a chemical formula would more than likely not be sufficiently intelligible, clear or precise. The Court, however, did not rule out the possibility of graphical representation of smells but stated that other techniques may lack intelligibility such as chromatography or 'digital noses'.[4] Even with differing legal frameworks, it would be unlikely that there would be many marks granted for smells.[5]


In Trinidad and Tobago, where graphical representation would be required, the lack of development in this area has left a great deal of speculation and it is only when these are more developed would this area be more certain. However, the IPO of Trinidad and Tobago has identified that scents may consist of a written description that describes the scent clearly or the chemical formulation that creates the scent in order for differentiation.[6] Nevertheless, in practice, it would be the IPO’s discretion to grant such registration. However, the above discussion and the EU’s line of reasoning suggest that it may be a very difficult threshold to overcome to connote such with graphical representation or adhering to the principles in Sieckmann.


Tastes

One of the early cases of OHIM was a request to register a taste of artificial strawberry within pharmaceuticals.[7] The application was rejected initially due to a verbal description not being sufficiently precise and then finally on the ground that there was a lack of distinctiveness. On appeal, the Court also held that a verbal description would not meet the Sieckmann criteria as a graphical representation of a taste. The SCT[8] reported that the graphical representation requirement can potentially be satisfied by using a written description of the taste and an indication that it concerns a taste mark– but there are other hurdles such as distinctiveness and functionality.


OHIM in Eli Lilly[9] stated 'Any manufacturer is entitled to add the flavour of artificial strawberries...for disguising any unpleasant taste… Moreover, the taste is unlikely to be perceived by consumers as a trademark; they are far more likely to assume that it is intended to disguise the unpleasant taste…' The Trademark Trials and Appeals Court also stated that it is very difficult for taste to be registered as a trademark when consumers only taste goods after purchase.[10]


Trinidad and Tobago IPO stated that graphical representation is possible using written description or the chemical formulation that produces the taste but, the other hurdles to registration would be difficult to overcome based on the above discussion. This area is also poised to be further explored. A search on the IPO’s database displayed no such marks registered as this area is in its infancy within the Caribbean. 


Sounds

The settled position in the EU is representing sound marks by an audio file of the sound or an accurate representation in musical notation.[11] Graphical representation was explored in Shield Mark BV v Joost Kist[12] where the Court stated that a score comprising of a stave with a clef, musical notes, rests and the form which indicated relative values would satisfy the Sieckmann criteria but verbal description of sounds would most likely lack clarity and precision. Alternative methods have been used worldwide for graphical representation such as depictions by oscillogram, spectrum, spectrogram and sonogram but such must meet the requirements of individual IPOs.[13]

 

In Trinidad and Tobago, the IPO has stated audio files are not accepted but graphical representation may potentially include the musical score, a written description and/or an image of the instrument on which the sound is played.[14] However, no such marks were located on the IPO’s database for Trinidad and Tobago, but it is envisioned that this area would also be poised for major development. 


Conclusion

Non-conventional marks are still hotly disputed and is a developing area in trademark law, especially in the Caribbean. Notwithstanding that the EU approach is more developed than the Caribbean approach, most matters have to be determined on a case-by-case basis and thus there is no real clarity in the law herein. 


[1] Ralf Sieckmann v Deutsches Patent-und Markenant, Case C-273/00 [2002] ECR I-11737

[2] L Bentley, B Sherman, D Gangjee and P Johnson, Intellectual Property Law (5th edn, Oxford University Press 2018) 937

[3] Veenootchhap Onder Firma Senta/The smell of freshly cut grass, R156/1998-2[1999] ETMR 429

[4] Eden SARL v OHIM, Case T-305/04 [2005] ECR II- 4705, [2006] ETMR (14) 181. [28] 

[5] TMDN, Common Communication on the representation of new types of trade marks (4 December 2017) (No common practice of registering scent or taste marks)

[6] Intellectual Property Office Trinidad and Tobago, ‘Caribbean Trade Marks Manual’ (IPO, October 2017) <http://ipo.gov.tt/downloads/Trademark/ctmm_oct_20_2017.pdf> accessed 15 December 2021

[7] Eli Lilly, R120/2001-2 [2004] ETMR (4) 59

[9] Ibid 

[10] World Intellectual Property Organization, ‘ Smell, Sound and Taste – Getting a Sense of Non-Traditional Marks’ (WIPO Magazine, February 2009) <https://www.wipo.int/wipo_magazine/en/2009/01/article_0003.html > accessed 15 December 2021

[11] EUTMIR, Art. 3(3)(g)

[12] Case C-283/01 [2003] ECR I-14313

[13] See note 9

[14] See note 6

Comments

Post a Comment

Popular posts from this blog

Angostura Queen’s Park Swizzle: More Than an Ounce of IP in Your Favourite Cocktail

-
Angostura Queen’s Park Swizzle Dareem Scipio* If you are a cocktail lover, then you might already be familiar with the Queen’s Park Swizzle® cocktail. A rich blend of rum and the signature Angostura® Aromatic bitters, this classic cocktail has its birthplace in Trinidad and Tobago. The cocktail, which derives its name from the Queen’s Park Hotel where it was first created over 100 years ago is now popular with mixologists around the world and brings delight to the tastebuds of cocktail lovers far and wide. While the cocktail has a rich history, it is also embedded with more than an “oz” of intellectual property which adds tremendous value to the overall product. The cocktail's signature name ‘QUEEN’S PARK SWIZZLE’ has been registered as a trademark by Angostura Ltd in Trinidad and Tobago, USA, Mexico and Canada . BUT… have no fear! This does not mean that you cannot decide to make your own cocktail at home. Neither does it mean that mixologists at your favourite pubs are prohibited...
Read more

Securing Copyright In Soca Music

-
  Securing Copyright in Soca Music Vasha Maharaj* Copyright law and soca have a challenging relationship. It must be considered how to protect original works while allowing the genre with its sharing norms to flourish. The judgement in  Full Blown Entertainment [1]   was unable to adequately address this concern. [2]  Specifically, the Trinidad and Tobago law on copyright sits uneasily with riddim culture, generic cultural references and music sampling and interpolation that is prevalent in the soca industry. Therefore, this blog post offers insight into some of the challenges concerning soca music and copyright law in Trinidad and Tobago. Full Blown Entertainment v Matthews The court held that the phrase, ‘wine with no worries’ and its syncopation did not meet the requisite originality standard to attract copyright protection. Justice Seepersad argued that the words comprise ‘elements of the genre’ of soca, the implication of which holds them to be too generic to sa...
Read more

Licks for 'Lick'

-
  Licks for 'Lick' Dr Justin Koo Shenseea and Megan Thee Stallion’s song ‘ Lick ’ has been subject to major attention and scrutiny due to allegations of copyright infringement. ‘Lick’ reproduced the phrase ‘put your back in it’ made famous by the song ‘ Put Your Back In It ’ that went viral as a result of a TikTok challenge featuring the song. However, the origin of ‘put your back in it’ is derived from an earlier song performed by Belfon in 2001 entitled ‘ Work ’.  The controversy with ‘Lick’ surrounds the use of the lyrics ‘put your back in it’ and two samples from ‘Work’ that Anastas Hackett alleges were used without permission. For the purpose of clarity, it is important to note that copyright in a single song can involve different layers – the lyrics (words), the composition (melody/background music), the performance (actual singing or playing of the music) and the production (mixing and mastering of the sound recording). Each of these elements attract copyright or neighb...
Read more

Broadcasting Bacchanal: Watching Football and Copyright Law

-
  Broadcasting Bacchanal:  Watching Football and Copyright Law Dr Justin Koo With the launch of the 2022/2023 English Premier League football season, there is once again controversy in the Caribbean region concerning broadcasting rights. There is nothing new about this scenario as ever so often there is news about conflict pertaining to which entity has the broadcast rights to the latest sporting event. Disputes over broadcast rights have been litigated in the Jamaican court system on at least two occasions concerning the broadcasting of the 2015 World Athletic Championships [1]  and the 2014 IAAF Diamond League. [2] The latest controversy concerning the broadcasting rights for the 2022/2023 Premier League football season begins with the rights being granted to a new entity, Verticast, for the entire Caribbean region. [3] Subsequent to the grant of the broadcast rights to Verticast, territorial sub-licences have been made to a number of different broadcasters and cable co...
Read more

The Cost of Copyright Infringement

-
  The Cost of Copyright Infringement Justin Koo Copyright cases in the Commonwealth Caribbean are rare. Admittedly, they have become more frequent in recent years as awareness about intellectual property rights increases. However, the development of copyright jurisprudence remains slow and at best patchy. Nonetheless, the recent dispute of  Drakes v Grant [1]  offers insight into copyright proceedings from start to finish, that is from allegation of infringement to a finding of infringement and finally the award of damages. Specifically, in the context of Trinidad and Tobago,  Drakes v Grant  was the first successful infringement case concerning the right of reproduction and as such is an important case given the general lack of copyright litigation. Recap of Case Drakes v Grant  concerned the unauthorised reproduction of the claimant’s photograph depicting Peter Minshall’s costume ‘The Dying Swan, Ras Nijinsky in Drag as Pavlova’. The photograph was used t...
Read more