It has been widely published1
that Warner Bros. reportedly spent USD$150 million on marketing for the “Barbie” movie. This is more than the USD$145 million budget used to produce the movie itself. The marketing campaign ranged from a website that allowed fans to make custom “Barbie” posters, partnering with Microsoft to launch the BarbieTM
Movie Doll Collection, to teaming up with Airbnb to construct a life-sized replica of Barbie’s Malibu dreamhouse. Another part of the marketing campaign were the billboards that popped up ahead of the movie’s release in July 2023. This drew mixed reviews from those in the marketing and advertising industry as well as practitioners in the intellectual property space. The billboards consisted almost entirely of the colour pink in Pantone 219C, with no logo, text, or image, save for a release date of “July 21”. Certainly an unconventional way of promoting an upcoming movie, this begs the question of whether a vibrant shade of pink is the only thing needed to generate brand recall.
Pantone 219C has become a crucial element of the brand's identity and has gained the term “Barbie Pink”. This is a prime example of a non-traditional trademark. In this article, we explore the significance of Barbie Pink and the broader concept of non-traditional trademarks in the world of branding and intellectual property.
Barbie Pink (Pantone 219C), a specific shade of vibrant, bubble gum pink, is unmistakably associated with the Barbie brand. It is a colour that has captured the hearts of people all over the world, making it a critical part of Barbie's visual identity. The association of a colour to a brand demonstrates the potent influence of colour in creating and maintaining brand recognition.
In the past, colour trademarks were considered non-distinctive and hard to protect, as they were deemed essential to the nature of the goods they adorned. Arguably, by accumulating and acquiring distinctiveness through extensive use in connection with their products, Mattel has transformed “Barbie Pink” into a non-traditional trademark. The immediate recognition of this distinctive shade of pink is invaluable intellectual property and a potential gold mine for any brand.
Traditionally, trademarks include elements such as words, logos, brand names, slogans or graphic design. In our ever-evolving business landscape, non-traditional trademarks have pushed the traditional four-corners of the trademark box and have gained significant importance beyond the intellectual property realm. Non-traditional trademarks go beyond conventional trademarks in terms of their nature, characteristics and potential.
Around the world, particularly in the United States through the Lanham Act, Canada, the United Kingdom and Australia, the provisions for protection of non-traditional trademarks have been longstanding. Some examples of non-traditional trademarks are as follows:
THE KITKAT CRISIS
Not all brands are as lucky to have been able to take advantage of the jurisprudence for non-traditional trademarks. Nestlé's iconic KitKat chocolate bar is known and loved worldwide for its unique and recognisable four-fingered shape. However, KitKat's distinctive shape became the epicentre of a legal battle over non-traditional trademarks, setting a precedent that changed the landscape of intellectual property protection.
This all began in 2002, when Nestlé applied to register KitKat’s four-fingered shape as a trademark in the European Union (EU). Arguments put forward were that the shape of the KitKat was iconic and distinctive, making it easily recognisable, and therefore warranting protection as a non-traditional trademark. Cadbury contested Nestlé's application, arguing that the KitKat shape was not sufficiently distinctive to warrant registration as a non-traditional trademark. The applicable standard for protection of a shape mark requires that the shape must be inherently distinctive to be eligible. This simply means that consumers must immediately associate the shape, i.e. the four-fingered shape with the product in question without any prompting or additional information.
In July 2018, after more than a decade-long legal battle, the European Court of Justice (ECJ) ruled that Nestlé’s application for the KitKat shape mark should be annulled (invalidated) and concluded that Nestlé had failed to prove that the shape of the chocolate bar had acquired distinctiveness throughout the entire EU. The “four-fingered” shape of Nestlé's KitKat bar is now only valid in member states where Nestlé's successfully applied and obtained registration as a national trademark.
REGISTRATION OF NON-TRADITIONAL TRADEMARKS IN MALAYSIA
Under the Malaysian Trademarks Act 2019 (“TMA 2019
”), section 2 on Interpretation introduced the definition of “sign”. In the former legislation, the Trade Marks Act 1976, definition of a trademark could be found under section 3 of Interpretation of “mark”. With the introduction of “sign”, brand owners are able to register “other source identifiers” as non-traditional trademarks. This includes the shape of goods or their packaging, colour, sound, scent, hologram, positioning and even sequence of motion or any combination thereof.
It is worth noting that taste and texture have yet to be included in the definition of “sign”.
Similar to traditional trademarks, trademark registration of non-traditional trademarks in Malaysia requires precise definitions of the subject matter. An application for registration of trademark under section 17 of the TMA 2019 is to be filed with the Trademark Registrar (“Registrar
”) together with the usual payment of prescribed fee, representation of the trademark, claim to priority, classification of goods or services, translation and transliteration or voluntary disclaimer. Regulation 9 of the Trademarks Regulations 2019 provides that an “applicant shall provide a clear and durable graphical representation of the trademark in the column provided for that purpose in the application for registration of trademark
”. How then would an applicant provide a “clear and durable graphical representation
” for let’s say, a scent trademark? In December 2019 and again in January 2023, the Intellectual Property Corporation of Malaysia (“MyIPO
”) released the Guidelines of Trademarks 2019 (the Guidelines)6
to serve as guidance for applicants. The Guidelines provide specific examples of how applicants can satisfy the requirement of a “clear and durable graphical representation
” under regulation 9. The following are some examples taken from the Guidelines.
The Guidelines require the applicant of a scent trademark to submit the description of the scent at the time of filing. This description must be clear, precise, and associated with the goods or services. Additionally, the applicant may submit to the Registrar the chemical composition or formula of the scent in the format of doc, docs, txt, rtf or pdf. The following is an example of acceptable chemical composition or formula of the scent from the Guidelines
For sound mark, the Guidelines provide that it is mandatory for the applicant to provide a description of the sound and the description shall be in detail and specific. Sonographs or sound recordings alone, as well as imprecise descriptions of the sound mark are not acceptable. In addition to the description, the applicant is to submit a recording of the sound at the time of filing in the MP3 format (not exceeding 5MB) and in addition, may submit to the Registrar the musical notation. An example of the acceptable description for the sound mark is “the mark consists of a sound mark of the following musical notation as shown in the representation attached to the application form”.
The following is an example of acceptable musical notation from the Guidelines:
A description of the shape mark is to be expressed in words. In addition to the description, the representation of shape or its packaging must be submitted in jpeg and PNG format only. The TMA 2019 provides that the Registrar shall refuse to register a sign as a trademark if the sign consists exclusively of the “the shape which results from the nature of the goods themselves, or the shape of goods which is necessary to obtain a technical result, or the shape which gives substantial value to the goods
”. However, shapes and 3D marks that are part of a product configuration are never inherently distinctive and must acquire distinctiveness.
The following is an example of the description of the shape of its packaging for a shape trademark from the Guidelines:
For the purposes of filing an application for registration of a colour mark, the applicant shall provide the description of how the colour is applied to the goods or used in relation to the services. It is also mandatory for an applicant to supply the Pantone colour code to describe the colour. In addition to the description and Pantone colour code, the representation of the colour shall be submitted by the applicant in jpeg and PNG format only. The following is an example of the acceptable description and graphic representation of combination of colours from the Guidelines
A brief search on MyIPO’s online search and filing system reveals that as at the date of this article, there are approximately 357 non-traditional trademarks, in various stages of application, currently on the Trademark register. These marks consist of a wide variety of non-traditional trademarks, from three-dimensional (3D) shapes, colours, and even moving image trademarks. Out of these 357 applications, approximately 16 are registered.
In the world of branding and intellectual property, non-traditional trademarks are becoming increasingly diverse. Mattel's “Barbie Pink” is prime example of the ever-evolving landscape of non-traditional trademarks. While Pantone 219C has been used as a predominant colour in the packaging of Barbie dolls since the 1970s and is an intrinsic and of immense value to the brand, it is ironic that as at the date of this article, Mattel does not possess trademark registrations for this “Barbie Pink” or Pantone 219C on their own. Could the recent blaze of publicity for “Barbie Pink” be laying the groundwork for an application in the near future?
The introduction of provisions that provide for protection of non-traditional trademarks in the TMA 2019 highlights the importance of protecting unique brand elements that extend beyond the traditional realms of logos and slogans. As Malaysia has seen the introduction of protection for non-traditional trademarks for some three years now, it is only time that more proprietors will try to take advantage of these new provisions.
Article written by Alyshea Low (Partner) of the Intellectual Property Practice of Skrine.