Beyond Sight: Maximise Your Senses

An overview of non-traditional trade marks by Sri Komathy and Loke Sin Wei.

Corporations around the world strive to implement unique business strategies to set themselves apart from their competitors. One such strategy is the development of brand loyalty where trademarks are seen as instruments for recognition. Trade marks that have established reputation and goodwill are valuable, and sometimes even invaluable. Hence, it is not surprising that owners of these marks will go to great lengths to protect the same. Generally, businesses utilise traditional marks such as words, logos, or even taglines, which are capable of protection in many jurisdictions.
Marketing and advertising strategies are becoming more creative and often go beyond conventional means. Brands now use different forms to be recognisable in the market. Trade indicia other than the traditional marks, for example sounds, scents, tastes, colours, shapes, textures, motion, and holograms, are slowly gaining recognition as trademarks which are capable of protection in various jurisdictions. These indicia are, by and large, referred to as non-traditional marks.
Although there is no universal acceptance of non-traditional marks, certain non-traditional marks have been accepted for registration by countries with more developed jurisprudence like the United States of America, Canada, the United Kingdom, and Australia. McDonald’s Corporation’s well-known five-note “I’m Lovin’ It” jingle and Metro-Goldwyn-Mayer Studios Inc.’s signature lion roar were both allowed registration in the European Union as sound marks.  
The Coca-Cola Company secured registration for its unique contoured bottle as a shape mark in Australia. The United Kingdom accepted Mondelez International, Inc.’s iconic triangle-shaped Toblerone chocolate bar for registration as a shape mark. In Australia, Cadbury (now part of Mondelez) registered the specific purple colour (Pantone 2685C) used on its Dairy Milk chocolate bar packaging and 7-Eleven Inc., the three horizontal stripes in the colours of orange, green, and red. More recently, Hasbro, Inc. succeeded in registering the smell of its Play-Doh modelling clay as a scent mark in the United States.
Other countries, such as China, Japan, and India have also started to recognise and introduce a mechanism to protect non-traditional marks.
Presently, Malaysian trade mark laws arguably only cater for the registration of traditional marks. When the Trade Marks Act came into force in the 1970s, it was unlikely that non-traditional marks would be considered capable of protection, particularly due to their rarity. Hence, the current requirements relating to the registrability of trade marks in Malaysia do not appear to accommodate non-traditional marks.
The current statutory registrability requirements would apply to both traditional and non-traditional marks. However, the unique nature and characteristics of non-traditional marks may not meet the conventional requirements presently enforced, which may explain the reluctance of some countries to allow non-traditional marks to be registered. Although each type of non-traditional mark poses different complications for registration, they share three common issues, i.e. definitive representation of the mark, distinctiveness, and functionality limitation.
Definitive representation of the mark
As a prerequisite, graphic representation of a trade mark is required for the purposes of substantive examination of registrability and record keeping on the register. The lack of such representation restricts or even worse, disallows the subject matter from being considered for protection altogether.
Due to the intrinsic features of non-traditional marks, there may be uncertainties and ambiguities relating to the representation of such marks and the scope of the monopoly when it comes to enforcement. For instance, a concise description of the sound, smell, or taste may not accurately capture the essential features of a mark, due to inherent limitations of certain languages. Such description may also be affected by the subjective perception and preference of the individual who is defining the mark which could have an impact on the interpretation. In other words, it may be difficult to develop a standardised methodology to represent non-traditional marks and store them for record purposes.
The European Union recently did away with the requirement for graphic representation. It has adopted the criteria of clear and precise representation to determine the subject matter of protection. To this extent, there is no particular method prescribed for the representation of non-traditional marks. An applicant is at liberty to determine the most appropriate manner of presenting a non-traditional mark and may even opt to utilise technology to represent, for example, a sound mark in mp3 format. However, as there is no standardised representation requirement, there is a risk of having multiple standards which may not provide a level playing field for comparisons to be made between non-traditional marks in instances of determining prior rights.
Australia, on the other hand, imposes an additional requirement of providing a concise and accurate description of the trade mark on top of graphic representation but does not accept highly technical information as part of the description. In such cases, description which requires the help of sophisticated technology to be precise may not be used.
Considering the above, intellectual property offices may consider providing guidelines instead of setting out rigid requirements on the manner of representation for each type of non-traditional mark together with relevant examples to provide some clarity without imposing stringent restrictions.
One of the foremost requirements for trade mark registration is the distinctiveness of the mark as a badge of origin. A trade mark needs to be distinctive to serve as an indicator of the proprietor as the source of the goods or services. A mark can be inherently distinctive, or it can acquire distinctiveness through use over time. Marks that are inherently distinctive are capable of identifying the source of the goods or services intrinsically as compared to marks that describe the goods or services in relation to which the marks are used.
To illustrate this, the word mark “KODAK” is an example of an inherently distinctive mark. It is an invented word without a dictionary meaning, and serves to identify the goods and services of the Eastman Kodak Company, that is, the business of digital imaging and photographic materials.
On the other hand, a mark which consists of a word with a dictionary meaning and is descriptive of the goods or services in relation to which the mark is used, is not inherently distinctive. It may, however, acquire distinctiveness through extensive use by which the public would associate the goods or services bearing the mark exclusively with a particular proprietor. An example of a mark that has acquired distinctiveness is “GENERAL MOTORS”. Although this mark consists of two words with dictionary meanings, it has acquired distinctiveness as the public have come to associate the mark with the goods and services, namely automobiles and automobile parts, of its proprietor, General Motors Company.
Inherent distinctiveness of a non-traditional mark largely depends on the nature and characteristics of the mark taken together with the goods and services to which it is applied. Some non-traditional marks are considered incapable of being inherently distinctive. Colour marks generally fall into this category as a colour, by itself, may lack the capacity to communicate information on the origin of goods or services without the presence of other features.
Similarly, scent and taste marks which exist in the goods as natural features or characteristics of the goods, cannot be considered inherently distinctive. A scent or taste must be added by the proprietor to identify the goods and be recognised by the public as indicating the trade origin.
In the absence of inherent distinctiveness, substantial evidence of use is generally required to prove that a non-traditional mark has acquired distinctiveness. Establishing acquired distinctiveness of a traditional mark can be an uphill task, and may be even more challenging in the case of a non-traditional mark where records of use may not be easily obtained or maintained. In some jurisdictions, it is also incumbent on the applicant to prove that the mark has acquired distinctiveness across a substantial part of the geographical territory that it covers.
For the purposes of registering and proving the distinctiveness of a particular non-traditional mark, it must be shown that the public associates the non-traditional mark with its proprietor or the proprietor’s goods or services, without the aid of other indications or features. For example, the renowned Nokia start-up tune has been successfully registered as a sound mark in some jurisdictions. The tune is highly distinctive of the Nokia Corporation even though it does not have any reference or indication of Nokia. Another example is the light medium robin egg blue colour (Pantone 1837), colloquially known as ‘Tiffany Blue’, is a protected colour mark in certain jurisdictions. The public are able to associate that particular colour with Tiffany & Co without the presence of any other indication or feature.
A major hurdle that may be peculiar to the registration of non-traditional marks is the requirement that marks should not be functional. A mark is said to be functional if it is essential to the use or purpose of the goods, or if it affects the cost or quality of the goods. This serves to preclude a business from monopolising a useful product feature under the pretext of identifying such functional feature as the source of the goods.
The United States of America has relied on the functionality doctrine in determining the registrability of such marks. In respect of sound marks, for example, the sound of a siren in connection with an ambulance or fire engine and their services is functional for the purpose of alerting the public. This supports public policy arguments opposing the registration of such sound marks.
Scents such as lemon for dishwashing liquids or floral for laundry detergents, which act as masking agents in those goods to conceal the unpleasant odour of the chemicals, are unlikely to serve as identifiers of the source of the goods.
Certain colours, or combination of colours, may be considered functional and hence, cannot be considered as a source identifier especially if it is due to technical results or a particular meaning associated with the colour. For illustration purposes, black colour in respect of solar power collectors is functional as it is associated with the technical result of absorbing heat while red colour has developed a recognised meaning for heat or fire; thus, the use of the colour on items such as thermal products or fire extinguishers is considered functional.
The extension of protection to include non-traditional marks does not alter the basic function of trade marks as source identifiers of the goods and services in trade. The functionality test goes in tandem with this core principle of trade mark law which prohibits the registration of marks which are dictated solely by the function, without which the goods or services cannot be provided. Ultimately, it also protects other traders as the test eliminates functional features from being registered as trade marks to avoid a monopoly of such features.
It is interesting to observe that many jurisdictions have moved or are moving from only protecting what a person can see as trade marks to include also what one can hear, smell, or even taste.
It is believed that there are ongoing discussions among the Malaysian regulators to amend our trade mark laws to provide for, among others, the protection of non-traditional marks. While this is a welcomed development and will benefit businesses that seek to rely on non-traditional marks as part of their corporate branding, the procedures to be adopted in protecting these marks remain to be seen. In this regard, our legislators need not reinvent the wheel and can avoid pitfalls in their endeavour by drawing on the experience of jurisdictions that have already amended their laws and introduced procedures to protect non-traditional marks.  

You may view the full issue of Skrine’s Legal Insights Issue 1/2019 here.