Whiskas purple, Tiffany blue, Louboutin red, Twentieth Century Fox fanfares, Microsoft Windows tune, Weber barbeque, Coca-Cola bottle, Lindt chocolate bunny. What do they have in common, you ask? They are all unconventional trade marks – colours, sounds, smells or shapes. But the unconventional character of a trade mark comes with certain challenges and the main one is trying to represent such a trade mark graphically.
Earlier this year, the European Commission issued draft legislation in relation to the proposed reforms of the European Union trade mark laws. One of them in particular has caught our eye – proposed removal of a requirement that a trade mark be capable of graphic representation.
Currently, a trade mark cannot be registered in either Australia or the EU if it cannot be represented graphically. Given that shapes, colours, sounds or scents can all function and be registered as trade marks, the requirement to represent such trade marks graphically comes with certain challenges to trade mark applicants.
The requirement for graphic representation has been interpreted differently by Australian courts and the European Court of Justice (ECJ).
In the EU, in the context of an olfactory trade mark (balsamically fruity with a slight hint of cinnamon), the ECJ has laid down seven criteria in relation to the representation of a trade mark and said that it must be: clear, precise, self-contained, easily accessible, intelligible, durable and objective. Needless to say, these criteria are almost impossible to satisfy and, as a result, currently there are no registered smell trade marks in the EU (the only infamous olfactory trade mark – the smell of fresh cut grass for tennis balls, expired in 2010 without being renewed).
Thus, the European Commission is proposing to adopt a more flexible approach and to only require that a trade mark be represented in a manner which enables the competent authorities and the public to determine the precise subject of the protection afforded to its proprietor (e.g., a sound file for a sound trade mark will be sufficient). This proposal, if adopted, means that the European Union Trade Marks and Designs Agency (new name to be adopted for OHIM) will most likely be faced with an increase in non-conventional trade mark filings.
In Australia, the situation is slightly better; the Trade Marks Office has adopted a rather flexible approach when it comes to a representation of a trade mark. The Trade Marks Regulations state that, for non-conventional trade marks, the application must include a concise and accurate description of the trade mark. This recognizes that it may be difficult to provide a sufficient representation of a trade mark in pictorial or diagrammatic form, especially if the trade mark is a shape, a colour, a sound or a scent. Further, in Woolworths Limited v BP plc (No 2)  FCAFC 132, the Full Court of the Federal Court of Australia was of the opinion that “[o]rdinary English words such as “description”, “particulars” and “representation”, which are not defined in the Trade Marks Act 1995 (Cth), should be construed flexibly so as to give effect to the purpose and policy of the Act.”
That said, some non-conventional trade marks are still easier to register than others. Currently in Australia there are: 1 scent trade mark – eucalyptus smell for golf tees; 43 sound trade marks (e.g., SPROING and the Tarzan yell); and some 267 trade marks, which claim colour as their distinctive feature.
Brand owners should remember that a word or a logo is not the only sign that can function as a trade mark. Therefore, when launching new products or services, businesses should carefully consider the overall get up of the brand and carry out trade mark clearance searches to ensure that it does not infringe an already registered trade mark (e.g., is the colour scheme adopted similar to a registered colour trade mark?).