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Making your mark the nontraditional way

There are signs that it is becoming easier to register nontraditional trademarks. But how useful are they for brand owners? A session at today's INTA Annual Meeting compares practice in China, Europe and the United States, reports Emma Barraclough.

Sixteen years ago OHIM opened its doors in Alicante. The legislation that had created it also ushered in a new era for nontraditional marks in Europe. From now on, the Community trade mark regulation said, CTMs can be registered as long as they are capable of being represented graphically and of distinguishing the goods or services of one undertaking from those of another.

The flexibility that the legislation gave to OHIM is important, says João Miranda de Sousa of Spain’s J&A Garrigues. “A trademark is a message to a consumer that says ‘this is unique. It’s my product. Buy it’,” he says. “Legislation should not put additional obstacles in the way of companies when it comes to them finding ways to attract customers.”

Miranda de Sousa, a former Director of General Affairs and External Relations at OHIM, is  one of the speakers at today’s session on nontraditional marks. He and Paul Ranjard of Wan Hui Da Intellectual Property Agency in China, Michael L. Gannon of 3M Company in the U.S. and Shelley Watson of Chivas Brothers Limited in the UK will share their experiences of protecting nontraditional marks in different parts of the world and consider the best strategies for trademark owners.

In Europe, the Court of Justice’s decision in Sieckmann (see box) was instrumental in clarifying how trademark examiners at OHIM should apply European trademark law in practice. “The Court essentially said that the problem of nontraditional marks is a logical problem, not a conceptual one,” says Miranda de Sousa.

But those practical problems still remain when it comes to applying for olfactory trademarks in particular. How can smells be represented objectively? Is the smell of cut grass (once registered as a CTM but now lapsed) or of baking bread different in Finland than it is in Greece? It is important that IP offices are cautious when it comes to granting exclusive rights to trademark owners—which is one of the reasons why so few smell and sound marks have been registered, says Miranda de Sousa.

Further relaxation

Europe’s relatively liberal legislative approach to nontraditional trademarks could become even more relaxed. In December 2010 the Max Planck Institute, which had been asked by the European Commission to consider what changes should be made to Europe’s trademark system, recommended that law makers eliminate the notion of “graphic representation” from the requirements of trademark applications. Instead, any representation would be acceptable as long as it met the Sieckmann standards of being clear, precise, self-contained, easily accessible, intelligible, durable and objective. IP owners will find out whether the Commission accepted the recommendation when it publishes its proposals for changing the rules. This is expected next month.

But while trademark owners keen to obtain nontraditional marks may welcome any move to relax the rules, they—and the attorneys who advise them—should keep their ultimate commercial goals in focus, says Miranda de Sousa. That means honing in on what the client really wants: do they just want a trade mark certificate or do they need something to stop rivals encroaching on their rights?“Even word marks can be very weak,” the former OHIM official says. “It’s not just about getting a mark on the register. It’s about the reaction you will get when you send someone a cease-and-desist letter.”

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