IP Information & News

Cheesy feet — how to protect an unusual trade mark

Alison Cole

By Alison Cole

Senior Trade Mark Attorney

What do cheeses and shoes have in common, other than conjuring up an unpleasant olfactory impression? Well, when it comes to protecting them as trade marks, it seems that they can learn a thing or two from each other. Here’s a guide to protecting unusual trade marks, looking at key example cases to understand what went wrong.

Obtaining protection for unusual trade marks

In addition to words, slogans and logos, it’s possible to protect colours, shapes, patterns, smells, sounds and gestures as trade marks. However, there are two key challenges to overcome to register such unusual marks — firstly, as with all marks, they must be represented graphically. Secondly, they need to consist of more than the product itself (hence why perfumes cannot be protected as smell marks).

Graphic representation

There’s no set definition for what constitutes a graphical representation. When it first became possible to protect unconventional marks, they were represented as descriptions in words, chemical names, formulae, sample products, multiple drawings and so on (one particular favourite of mine is “the smell of bitter beer applied to the flights of a dart…”). As fun as these descriptions were, they often left much to the imagination — and when we need legal certainty to determine exactly who owns what, this was never going to last for long.

One infamous case established the Sieckmann criteria — a set of requirements which changed everything. They state that a sign must be:

  • clear (not ambiguous)
  • precise (not simply the name of a colour)
  • self-contained (not requiring further reference decipher)
  • easily accessible (not requiring specialist knowledge)
  • intelligible (to be understood by the description, not the senses)
  • durable (not alter over time)
  • objective (not requiring qualification)

The upshot of these criteria (recently enshrined in a change to EU law) has been a spate of cancellations of previously accepted registrations by green-eyed competitors. For instance, Cadbury’s claim to the colour purple for chocolate was successfully challenged by Nestlé (to protect its ‘Purple One’ in Quality Street) and Mattel’s protection for a 3D scrabble tile (challenged by Zynga, the makers of the Words With Friends app) has also bitten the dust. Others, such as the smell of freshly cut grass as applied to tennis balls, haven’t been renewed, presumably in light of the decision diminishing the likelihood that they would be unenforceable against third parties.

Protecting shapes

The registration of shape marks has always required applicants to overcome additional hurdles set out in legislation. A shape must not:

  • result from the nature of the goods (if it’s standard for goods to have a certain shape, it’s unfair to grant any one party a monopoly over that shape)
  • give substantial value to the goods (if the shape alone drives up the price of the product, protection will be refused)
  • be necessary for a technical result (even if the shape is not the only way of obtaining said technical result, if function appears to be the motivation for the shape and/or the material, protection won’t be granted)

Due to one or more of these criteria, protection has been denied to some seemingly iconic shapes, including Gillette’s three-headed electric shaver, Nestlé’s four-finger KitKat bar and LEGO bricks.

There is one way to overcome some of the objections that can be raised against applications for trade marks. If an otherwise non-distinctive mark is deemed to have acquired distinctiveness as a result of the use made of it, an application can be successful. However, this proviso doesn’t apply to the requirements for graphical representation of shape marks. As such, regardless of the level of awareness that a mark has achieved, protection will be refused on the grounds that it can’t ever be capable of distinguishing the goods or services of one party from those of other parties.

Cheese and shoes — seeing red

In 1996, Fromageries Bel SA (The Bel Group) was initially successful in obtaining a UK trade mark registration for the following:

babybel.png#asset:2239

“The mark is limited to the colour red. The mark consists of a three dimensional shape and is limited to the dimensions shown above”.

In 2017, Sainsbury’s applied to invalidate the registration on the grounds that it consists of the shape of the goods themselves and is therefore devoid of distinctive character. In addition, it claimed that the colour specified in the Babybel trade mark registration was ‘ambiguous’ and should be rejected under the Sieckmann criteria.

The UK Intellectual Property Office (UKIPO) held that the trade mark didn’t consist exclusively of the shape of the goods, since the colour was also an important element in the mark. However, Sainsbury’s was successful regarding the colour challenge — the broad description of ‘red’ was held to be insufficiently precise and lacked clarity. The registration was therefore invalidated, despite the fact that it predates the Sieckmann criteria coming into force.

In contrast, Christian Louboutin was successful in defending a challenge to its registration of a mark consisting of a colour applied to the sole of a shoe. Louboutin owns an EU trade mark registration for a specific shade of red (Pantone 18.1663TP) as applied to the sole of a shoe. This is a colour mark, not a shape mark, and the description of the mark accompanying the image below has proven crucial:

shoe.jpg#asset:2240

“The outline of the shoe is not part of the trademark but serves to show the positioning of the trademark”.

The registration was challenged when Louboutin tried to enforce its registration. The challenge was that the mark consists ‘exclusively of a shape which gives substantial value to the goods’. Again, the Court decided that the mark did not constitute a shape exclusively. A colour, without an outline, does not constitute a ‘shape’. The shape of the product or of a part of the product might play a role in creating an outline for the colour, but it cannot be held that the sign consists of that shape, particularly where the registration of the mark sought to protect a colour. Since the colour was specifically defined using a recognised Pantone reference, it also passes the Sieckmann criteria.

The importance of public perception

When considering if a sign can function as a trade mark, the courts consider if the average consumer would use that sign to determine a product’s commercial origin. It was this that led to the refusal of protection for another shoe manufacturer, Birkenstock. In 2017, Birkenstock (a German manufacturer of sandals and shoes) applied for EU trade mark protection for this pattern on the soles of shoes:

pattern.png#asset:2241

Initially, the European Intellectual Property Office (EUIPO) refused to allow the application. Birkenstock appealed this decision to the Board of Appeal, but was unsuccessful. The Board said that the average consumer doesn’t usually perceive a sign which is “indissociable from the appearance of the goods themselves” as designating commercial origin. Birkenstock appealed a second time, and lost once more.

What’s key in this case is that the pattern consists of a repetitive sequence which can be continued in all four directions forever. This would therefore be seen as a non-distinctive surface pattern, not a trade mark. No outline was provided to give context to the pattern. The graphical representation of the mark was acceptable in this case, however its interpretation meant that the mark was seen as non-distinctive. To rub salt into its wound, Birkenstock may have missed a trick here — this objection actually would have fallen under the aforementioned proviso, though the company submitted no evidence that the mark had acquired any distinctiveness.

The public’s perception also depends on how the goods appear at the point at which they are selected. In 2004, Bongrain SA applied to protect the unusual shape of a cheese as two, three-dimensional trade marks:

cheese.jpg#asset:2242

The application was initially refused — not on the grounds that the shapes result from the nature of the goods, but that the shape wasn’t distinctive. Bongrain’s sunsequent appeal was dismissed by the Court of Appeal because, although the shape was unusual, it was determined that the public isn’t used to simple shapes indicating the origin of goods. Here, both the graphic representation and shape were acceptable, but the mark wasn’t considered sufficiently distinctive. Although evidence of acquired distinctiveness might have helped, the evidence was of the shape inside packaging, which had other trade mark material on it.

How it should be done

A contrast to these two cases is the successful application for an unconventional three-dimensional trade mark application for a heart shaped cheese in burgundy wax with a specific Pantone reference:

400g-heart-small-version-csbi_190410_123442.jpg#asset:2244

A 3 dimensional heart shape covered in wax, which is the colour of Pantone number 690C, made up of Pantone Rhod. Red 72.70 and Black 27.30”.

With the Pantone numbers, the mark was considered to be properly graphically represented. Objections were raised by the UKIPO as to the inherent distinctiveness of the mark. These were overcome by submitting evidence of the length and extent of use made of the shape. Crucially, the majority of the use displayed was without any additional wording or other material. As such, it was shown that the shape and colour combination was functioning to identify the applicant’s products, and no one else’s.

The objection also required an explanation as to how it could be distinguished from the unsuccessful Bongrain trade mark. Since this application was not for the goods themselves, but rather the packaging (which was immediately visible in the advertising and promotion of the goods, as well as to the consumer at the point of sale), the distinction was easily made.

How to protect an unusual trade mark — four top tips

Unconventional trade marks can be protected through trade mark registrations. However, a greater level of attention is required when filing the graphical representation and any explanatory text. Many products have unusual aspects to distinguish them from the competition and which therefore could warrant protection. Trade mark applications to protect these aspects will usually be more lengthy and expensive to pursue — however, if the following points are borne in mind, any hurdles and their impact can be minimised:

  • Can your trade mark be graphically represented in accordance with the Sieckmann criteria?
  • Be realistic — does that element of your product actually function as a trade mark?
  • In the event of an objection, will you be able to provide evidence that the element has acquired distinctiveness?
  • Would another form of IP protection, such as copyright or design right, be more appropriate for your needs?

If you’re looking to protect an unusual trade mark or need any other IP-related advice, feel free to get in touch with me at ajc@udl.co.uk.

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