By: Sana Javed - Associate at Ali & Associates
A move away from the conservative approach of the concept of trademarks is aimed at establishing that in today’s complex marketplaces; only trademarks that stimulate all five senses with the objective of attracting the consumer’s attention will acquire a firm and durable presence. While it is true that conservative marketing is largely dependent on visual senses notwithstanding the fact that there are other senses which are capable of building a connection between the brand and the customers.
Mercedes Benz in its S550 model offered hot-stone massage and custom scents for a spa experience in the car. Hence if brands think proactively and creatively about its marketing, the power of senses is seemingly a monetizable asset in the form of trademark. However, during this era of ever increasing proliferation of multi-sensory marks, the biggest challenge to be faced in the trademark laws is the granting of exclusive proprietary rights over the non-traditional trademarks such as scent, sounds, flavors and color.
In Pakistan under the Trademark Ordinance 2001, a mark may be registered if it falls within the definition of ‘mark’ enunciated in Section 2 of the Trademark Ordinance which includes colors, sounds or any combination thereof which is capable of being represented graphically. Therefore Pakistan has been more progressive than many other Countries including, India, in recognizing the registration of sound as trademark. The Indian Trademark Act, 1999 is silent with regards to the adoption of Sound as a mark and therefore neither recognizes nor restricts the registration of sound as trademark; hence Yahoo yodel of Yahoo was the first sound mark to be registered in India in 2009.
Although colors are capable of attaining the status of a trademark according to the Trademark Ordinance 2001, but the threshold established by the Superior courts of Pakistan state that the applicant has to prove that the color has acquired a secondary meaning in favor of the Applicant. The rationale behind the secondary meaning is to establish the public perception with regards to the unique color and the corresponding product or service to solely associate with the Applicant. Hence a trademark application for color is functional if it has acquired a utilitarian objective and it is fundamental to the use or end to which the product is destined or affects its cost or quality.
The particular shade of “robin egg blue” has become so closely identifiable with ‘Tiffany’ brand that it is now known as Tiffany Blue hence, the blue box and bag is registered under United States Trademark laws and it is now an American icon that has come to symbolize exclusivity and unmatched craftsmanship.
However, approach pertaining to the grant of exclusivity over color may be complex and problematic, hence not easily deducible. Recently in an action brought by Nestle SA, Cadbury Ltd failed to register the color Pantone 2865c – introduced in 1914 as a tribute to Queen Victoria. The Court of Appeal said the trademark application lacked “the required clarity, precision, self-containment, durability and objectivity to qualify for registration”. This decision has led to uncertainty and is being criticized for having the impact that any supermarket or rival could now use ‘Cadbury purple’ on their products. The decision opens up the possibility that rivals could launch a host of copycat products to try and cash in on the success of the Dairy Milk products.
Grey area also lies within the smell mark which is also known as olfactory marks, although potentially register able, since they do indicate commercial origin of goods and services.
In United Kingdom first olfactory trademark was granted to Japan Sumitomo Rubber Co in 1996 for “a floral fragrance of rose as applied to tyres”. This mark was later transferred to Dunlop Tyres. In 1999 the first Community Mark for a smell was granted to Vennootschap onder Firma Senta Aromatic Marketing of Holland it registered “the smell of cut grass” for tennis balls.
However these are rare incidences and a trademark for smell rarely succeeds. Chanel failed to register the smell of Chanel No.5 and John Lewis of Hungerford plc. A famous the furniture maker, failed to register the smell of cinnamon to his furniture. Hence it is very difficult to register a smell mark if not impossible therefore previously obtained registrations also face the danger of attack on their validity.
Touch marks, also known as tactile marks are capable of registration. A product which is manufactured in such a way that its packaging has a particular sensation, which distinguishes it from those of its competitors, is capable of registration. Example luggage sold under Louis Vuitton may be entitled to protection as touch mark. Some successful registered tactile marks is of David Family Group, LLC, which is a leather texture wrapping around the middle surface of a bottle of wine and American Wholesale Wine & Spirits, Inc. where the velvet textured covering on the surface of the bottle of wine was registered.
One area which is recognized and easily register able is trade dress, since it also directly affects the cost and quality of the product. The design of the product gives an edge to its utility, efficacy and superiority to the brand image. United States patent and trademark office has successfully registered the design of the coca cola bottles, conically shaped Hershey’s kisses and many more.
Taking a balanced perspective it is clear that while untraditional marks such as color and sound is capable of trademark registration, registration may only be granted when the use of the mark is exceptional and has acquired secondary meaning. Having said that although Intellectual Property Law in Pakistan is far behind the United Kingdom or the United States however the Businesses cannot afford to lose their IP rights and therefore shall seek the protection of the same.