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There is a surprising variation among countries as to which shape, sound, smell, colour and motion trade marks can be registered. Canada, for instance, lags a long way behind the US, only allowing the first sound mark earlier this year – and that took an order from the Federal Court to overturn its practice. The US itself has a unique system, with registers for distinctive and non-distinctive marks. While in Japan, debate slowly led to the acceptance of 3D marks; it has recently agreed to allow sound, movement and colour, but implementation is unpredictable; and scent, taste and touch have been rejected outright. Indeed, Switzerland is one of the few countries that allows smells; but no one can seem to register one.

Questions

For each of the following non-traditional trade marks, please detail whether it is registrable in your jurisdiction, whether any have actually been registered (giving examples), and any advice you would have for clients on how to register one. 1. Colour or colours 2. A three-dimensional shape 3. A sound 4. A scent 5. A hologram or moving image

Canada

In March 2012, The Canadian Intellectual Property Office (CIPO) circulated for comments a list of proposed amendments to the Canadian Trade-Marks Regulations that would allow for holograms and motion and sound marks to be registered as trade marks and which clarify the requirements for colour and three-dimensional shape marks. The Proposed Regulations can be found on the CIPO's website and interested parties should consider filing applications now in those areas using the Proposed Regulations as a guide.

A specific colour applied to a particular shape and size of a product is registrable in Canada. Thus, a single colour applied to the whole of the visible surface of a product of a prescribed shape may be registrable, for example the brown of a UPS truck or uniform. In addition, combinations of colours are registrable, as for example the green and yellow of a John Deere tractor. The Proposed Regulations confirm this by allowing registration for colour or combinations of colour applied to the surface of a three-dimensional object.

As with other trade marks, it must be distinctive. Both the courts in Canada and the Trade Marks Office have generally been sceptical that a single-colour trade mark can be distinctive. The burden of proving distinctiveness will rest on the applicant. Many of the colour cases in Canada have concerned the colour of capsules and pills. In most instances, their manufacturers have failed to show distinctiveness.

Colour trade marks are not registrable if they are functional. A mark whose sole or primary function is ornamental or decorative is also not registrable in Canada. Colour marks are of course susceptible to such attacks.

Three-dimensional shapes may be registered either as a distinguishing guise or as an ordinary trade mark, depending upon the nature of the mark.

The shaping of wares themselves or their containers are registrable as a distinguishing guise, so long as they are used as trade marks to distinguish the source or origin and have become distinctive. For example, the shape of a bottle of Heinz ketchup and the shape of Life Saver candies have been registered as distinguishing guises in Canada. In order to register a distinguishing guise, an applicant must provide evidence of the extent to which and the time during which the distinguishing guise has been used.

Three-dimensional marks not falling within the definition of a distinguishing guise, such as a three-dimensional logo, are registrable as an ordinary trade mark. Unlike distinguishing guises, applications for these trade marks do not require evidence of use.

Applications for three-dimensional shape marks often fail for lack of distinctiveness. In the case of distinguishing guises, applications may also be refused if the registration of the guise may interfere with a utilitarian feature or unreasonably limit the development of any art or industry.

Lastly, like applications for colour trade marks, three-dimensional shapes are not registrable if they are functional.

At almost the same time as the publication of the Proposed Regulations, CIPO consented to an order overturning its own previous rejection and allowed a sound mark for the MGM lion's roar. On March 28 2012, CIPO issued a practice notice stating that in view of a recent Federal Court order (to which CIPO had consented), effective immediately, the Trade-marks Office will accept applications for sound marks.

The practice notice dictates that the application:

• must state that the application is for the registration of a sound mark;

• must contain a drawing that graphically represents the sound;

• must contain a description of the sound; and

• must contain an electronic recording of the sound.

The practice notice also specifies that sound mark applications cannot be filed electronically and must be accompanied by a CD or DVD with an MP3 or WAVE file no bigger than 5 megabytes.

The Proposed Regulations do not address scents. We are not aware of any applications or registrations for scent trade marks in Canada. Scents will likely not be considered registrable, in part due to the difficulty in accurately and precisely describing them. It does not appear likely that amendments to the Trade-mark Regulations permitting applications for scents will be made in the near future.

Hologram trade marks have been applied for and a few have been registered (for example, the Mastercard Globe Hologram Design). We are not aware of any registered moving image (or motion) marks.

Applications for both holograms and moving images have so far been challenged on the basis that the proposed mark is not accurately described or represented in a drawing, and that it actually consists of a multiplicity of marks and is thus not registrable. If the Proposed Regulations are adopted, as expected, both types of marks will be able to be registered.

They stipulate that a hologram application:

• must state that the application is for the registration of a hologram;

• must contain a drawing or drawings including one or more views capturing the holographic effect in its entirety; and

• must contain a description of the hologram mark.

And an application for a motion mark:

• must state that the application is for the registration of a motion mark;

• must contain a drawing or drawings containing one image or a series of images depicting movement;

• must contain a description explaining the movement; and

• may contain an electronic representation showing the mark in motion.

Brian W Gray (far left) and Amy Grenon Norton Rose Canada Toronto

China

In Chinese trade mark practice, for the registration of a single color trade mark the China Trademark Office is likely to refuse the application on the basis of non-distinctiveness. However, a trade mark of a combination of colours may be applied for according to article 8 of the Chinese Trademark Law.

But please note that the inherent distinctiveness of a colour-combination trade mark constituted by two common colours is relatively weak. For example, on January 8 2002, a Swedish company named Kapman filed a trade mark application in class 8 for a colour combination designating goods relating to a saw blade (parts for manual tools) to the China Trademark Office, which was rejected. Kapman then applied for a review with the TRAB. The TRAB determined that the form of the colour combination in the trade mark was too simple and too difficult to be distinguished as a trade mark by ordinary consumers, and therefore, lacked the distinctiveness required of a trade mark. Then, Kapman brought an administrative action before the Beijing No 1 Intermediate People's Court. The court conducted a trial, and confirmed the decision of the TRAB.

But, trade mark applications for a combination of three colours might be approved. For example, the below trade mark application for a combination of three colours, red, blue and gray, was registered in 2003 by a Chinese entity in China.

In addition, in accordance with Article 10 (1) of the China Trademark Law, the national flags of foreign countries as well as the flags of intergovernmental international organisations are prohibited from being registered as trade marks. Therefore, applicants should avoid clashing with foreign national flags when applying for the registration of color combination trade marks.

A three-dimensional mark is registrable in China. But, not all three-dimensional signs can be registered and protected as trade marks.

Article 12 of the Trademark Law says that "where an application is filed for registration of a three-dimensional sign as a trade mark, any shape derived from the goods itself, required for obtaining the technical effect, or giving the goods substantive value, shall not be registered".

Below are two examples of three-dimensional shapes that were successfully registered.

Under current trade mark law, sounds, scents and moving images are excluded from registration in China.

Article 8 of the 3rd Draft Amendments propose to expand the scope of protection of non-conventional trade marks by adding sounds considered registrable as a trade mark. These have yet to be confirmed and implemented, however.

Even though the earlier draft amendments signaled a possible extension of protection to cover scents and moving images, the 3rd Draft Amendments did not cover them, most likely due to the difficulties in administering the registration of such non-conventional trade marks.

Qiang Ma Jun He Law Offices Beijing

European Union

In the EU, an application for any sign will only be accepted (subject to further examination) provided that the sign is represented graphically as an image on the application form. A mere description of the mark will not be accepted. The representation of the mark must be self-contained, easily accessible, intelligible, clear, precise, durable and objective. These requirements are known as the Sieckmann criteria. For some non-traditional trade marks, these cumulative criteria can prove too difficult to satisfy.

OHIM will accept applications for a single colour if a swatch of the colour accompanies the application. For signs consisting of several colours, the proportion of each colour and a description of how they will appear are required. To avoid confusion regarding the exact shade of colour for which protection is sought, it is advisable to indicate the corresponding international colour code such as the Pantone® reference. However, this is not an absolute requirement and the applicant's own description of the mark will suffice.

Other types of marks that feature a colour as one of their component elements such as, for example, a logo, part or all of which is in colour, are acceptable. However, in such cases the colour element will be deemed to be part of the mark and trade mark protection for the colour element will be restricted to the particular colours filed. No such restriction would apply to the same logo filed in black and white. Therefore, in certain circumstances, it may be worthwhile filing for a mark in black and white instead of, or as well as, in colour in order to obtain the broadest protection.

In practice, although single colour mark applications may be accepted, it can be very difficult to achieve registration unless the applicant has used it for the goods or services covered for a number of years. This is because an objection is frequently raised at the examination stage of the application on the basis that colours are exhaustive and should be free for use by all traders.

Further, registration of a colour is unlikely if the colour sought has a connection to the relevant field of industry of goods or services covered by the mark. For example, green for a single colour mark covering agriculture or environmental services is likely to be refused. However, an example of a single colour which achieved registration is reproduced below, covering "Pipe end protectors (not of metal), namely caps and stoppers". Unusually, no evidence of use was required to obtain registration. This may be because the list of goods is particularly narrow, or that there is no descriptive link between the colour and these goods.

Shape marks can more easily satisfy the Sieckmann criteria since it is possible to submit depictions of the shape from a number of different angles. If the shape is totally unrelated to the goods or services covered by the application, there is a good chance that the mark will achieve registration. However, the office will issue a refusal if the shape results from the goods themselves, is necessary to obtain a technical result, or adds substantial value to the goods.

Provided the above conditions do not apply, a shape may be registrable if it differs significantly from the norm in the relevant sector for the goods so that the consumer would immediately be able to tell the origin of that particular product simply from the shape. A good example is the shape of water bottles. An average bottle shape application which covers alcoholic or non-alcoholic drinks would be refused registration. However, if a bottle is particularly unusual, such as the example below, registration may be possible.

Marks consisting of musical sounds will be accepted if represented in the form of a traditional musical score. It is also possible to file a non-musical sound. However, the latter requires filing a sonogram or oscilogram in combination with a sound file of the mark itself. Descriptions of either type of mark alone will not be accepted. Sound marks that have achieved registration include the famous Intel sound trade mark.

OHIM does not accept applications for marks consisting of scents or smells since these are considered incapable of graphical representation. Switzerland, which is not a member of the EU, allows scent marks but has so far not permitted the registration of any marks, despite applications including extensive information including recipes and chemical formulae.

Applications for holograms typically encounter problems before OHIM since it is difficult to capture graphically the holographic image in a manner that satisfies the Sieckmann criteria. Previously, applications for holograms used to be rejected outright by OHIM. In more recent years a number of applications have been accepted. However, the only hologram actually registered is depicted above. It is worth noting the mark contains no image, but covers the abstract "whole spectrum of colour" which is emitted by holographic materials. It seems that other applications for holograms containing images have been either voluntarily withdrawn by the applicant, presumably following an official objection, or have been refused registration.

Esther Gottschalk (far left) and Ariana Kumar Marks & Clerk London

Japan: Marks are coming, slowly

While three-dimensional shapes have been registrable in Japan since 1997, most other non-traditional marks cannot be registered. One of the best-known examples of a three-dimensional mark is the shape of a Coca-Cola bottle, which was registered as a trade mark in 2008. Its distinctiveness was questioned by the Japan Patent Office and disputed in court, but the Intellectual Property High Court found that the bottle had acquired distinctiveness through extensive use since 1957. Another example is a Peko-chan statue, registered in 1998. This is a statue of a little girl, well-known all over Japan, standing in front of a nationwide franchise of pastry shops called Fujiya. Please note that a three-dimensional shape is not registrable if it consists solely of a shape of goods or their packaging which is required for them to function properly. Other non-traditional trade marks, such as colour or colours, a sound, a scent, a hologram or a moving image, are not registrable in Japan. However, amending the Trademark Act to enable such registrations has become one of the major issues of the past decade. The Japan Patent Office has formed a working group comprising academics, practitioners and stakeholders to discuss the matter thoroughly. Behind this are international trends and increasing demand among Japanese businesses for the protection of non-traditional marks. According to a survey conducted by the Institute of Intellectual Property in 2007, which was mentioned in the JPO's Report of the Working Group to Study New Types of Trademark of October 2009, 60% of around 500 Japanese companies said they used one or more of the non-traditional trade marks, and 82% wished they could be protected as trade mark rights. The same survey showed business needs by type. See box. There seems to be more demand for a sound and a position than a scent or a taste among the surveyed companies, but even the latter has significant demand. The Report concluded that it would be appropriate to make registrable a moving image, a hologram, colour or colours, a position, and a sound as a trade mark by amending the Trademark Act, but did not support the idea with the other types including scent, taste, a sense of touch and trade dress. The different treatment among the types is based on the Working Group's conclusions as to whether the extent of the trade mark right for each type can be specified clearly and precisely from a technical point of view. Its conclusion is that it is possible to specify the extent of the right clearly and precisely i) for a moving image and a hologram by diagrams or figures combined with text or electronic files, ii) for colours by being accompanied by explanations, iii) for a position by being accompanied by figures of goods or services and explanations, and iv) for a sound by electronic files. But the Group concluded that a scent, taste, and sense of touch would be difficult technically to specify on documents and electronic files, and also for the JPO to preserve and publish with certainty. Even for those trade marks that the Working Group approved, there are still technical and policy issues to be resolved. The technical issues include how to amend the definition of a "mark" under the Trademark Act to incorporate the new trade marks and whether or not distinctiveness should be incorporated in the definition of a trade mark, changing its current status as one of the requirements for registration. There is still some hesitation in the industry over the risk of unforeseen infringement. Thus it will take some time for non-traditional marks to become registrable. In terms of advice, please note that non-registrability does not mean there is no legal protection. The Unfair Competition Prevention Act can provide legal protection for a well-known or famous indication. Those who wish to have their non-traditional trade marks (other than a three-dimensional shape) registered in Japan need to somehow incorporate them in the traditional categories. As the JPO and others are still willing and working to introduce the non-traditional marks as early as possible (other than scent, taste and touch), it is also advisable to use these marks in Japan and acquire distinctiveness so that as soon as they become registrable they can be registered before any others. Kozo Yabe (far left) and Takashi Yamada Yuasa and Hara Tokyo Percentage of Japanese companies that want certain trade mark rights, by type Moving image Hologram Colour(s) Position Sound Scent Taste, sense of touch 55% 58% 42% 60% 63% 25% 20%

Mexico

In Mexico, only visual signs are considered protectable under the trade mark system. The Mexican IP Law defines a trade mark as any visible sign that distinguishes products or services from others of the same type or category on the market; consequently, sounds and scents are not registrable under Mexican trade mark law, regardless of whether or not they comply with other registration requirements, such as distinctiveness.

There is a specific provision preventing registration of isolated colour marks; however, if the applicant files a trade mark application for a combination of colours or accompanied by other elements, such as a sign, design or word that would provide additional distinctiveness, it may be eligible for registration.

In the Mexican system three-dimensional shapes are the only non-traditional trade marks that are officially recognised and that may be registered as marks. However, in order to be eligible for registration a) they must be sufficiently distinctive to distinguish the protected goods over other identical or similar goods that could be found in commerce, b) the shape to be registered should not be in the public domain and c) the shape to be protected should not be of common use.

Except for three-dimensional trade marks, there are no records of registrations for non-traditional marks. In order to be officially protected, we would need an amendment to the Mexican Industrial Property Law expanding the definition of a trade mark.

Neither holograms nor moving images can be protected in Mexico, since there is a specific prohibition in the Mexican IP Law against three-dimensional animated or changing names, figures or shapes that are expressed in motion even when visible. These may not be registered as trade marks.

However, although applicants may face challenges when trying to protect these types of marks, certain types of non-traditional or unconventional marks may acquire protection through the Mexican copyright system.

Clients may find alternative protection for holograms or moving images through a drawing work, or to sounds through a musical work. In Mexico, works are protected by copyrights, starting the moment they are created, materialised in any media and capable of being copied, regardless of their merit or destiny, as long as they are original.

While registration of works is not mandatory in order to obtain copyright protection, the Mexican Copyright Office produces an official document that proves the existence of the work and the ownership of the copyrighted work by the registrant, which may be very important in a dispute.

If clients choose this type of protection for a moving image, they would need to file a copyright application for a drawing work with the drawings, including one or more freeze frames with the various views of the designs.

Although sounds are not visible signs and could not be protected under the Mexican IP law, the Federal Copyright Law states that any work that could be considered analogous to a literary or artistic work should be protected. Accordingly, any party seeking to protect a work that may result from the fixation of a series of musical, spoken or other sounds should file an application for copyright protection of a musical work.

The advantage of acquiring a copyright certificate of registration is that it may be easily enforced in criminal procedures, in addition to administrative actions; nevertheless, Mexico is part of the Berne Convention, so the registration of a particular work is not mandatory.

While copyright law is an alternative for protecting sound marks and moving images, there is no possibility of protecting a distinctive scent in Mexico.

Ana Luisa Ibañez Goodrich Riqulme y Asociados Mexico City

US

Marks consisting of a non-functional single colour or a combination of colours, on a product or part of a product, are considered registrable and protectable in the US, but only with proof of acquired distinctiveness (secondary meaning). This rule was stated by the US Supreme Court in Qualitex v Jacobson Products (1995) (a green-gold colour on dry cleaning press pads were held protectable with acquired distinctiveness in an infringement case, reversing an appeals court ruling that colour was not protectable) and by the Court of Appeals for the Federal Circuit in In re Owens-Corning Fiberglas (1985) (holding the colour pink registrable as applied to rolls of home insulation after showing of extensive acquired distinctiveness).

The USPTO application manual requires a drawing of the mark showing the colour or colours and how they actually appear on the product, plus a separate statement in words describing the colours and where they appear and how they are used in the mark. In the drawing, the shape of a coloured product or package will usually be shown in dotted lines, to indicate that exclusive rights are not claimed in the shape itself, but only in the combination of shape and colour. An example is a registration for the well-known light blue box of the famous jewellery maker, Tiffany, in 2000, which shows a box with dotted lines in the colour light blue and covers a long list of jewellery and other goods sold in such a box, plus retail store and mail order catalogue services featuring those goods.

Registration for non-functional colour marks and other non-traditional marks is also usually available in the US on the Supplemental Register (the register for non-distinctive marks), without proof of acquired distinctiveness. However, such registrations confer very little protection.

In infringement cases, the defendant may claim that confusion is not likely because other circumstances of use, such as different word trade marks on the parties' products, sufficiently inform consumers as to the actual origin of the goods. Accordingly, registration on the Principal Register is not a guarantee that a court will order the copier to stop his copying. The trial court in the Qualitex case held that confusion was likely and enjoined the copier, finding the other circumstances of use insufficient to negate the confusion caused by colour copying.

Marks for three-dimensional shapes in the US fall in two main categories: (1) the non-functional shape of packaging, such as an unusual perfume bottle shape, and (2) the non-functional configuration of the product itself. Product configurations are registrable on the Principal Register only if acquired distinctiveness is shown, such as has been done for Zippo lighters. The registration issued after the USPTO appeals tribunal (TTAB) overruled the examiner's rejection based on functionality and held that configuration non-functional, in In re Zippo Manufacturing (1999). The examiner had already accepted Zippo's proof of acquired distinctiveness.

Packaging shape marks are considered registrable in the US on the Principal Register without proof of acquired distinctiveness if the shape is inherently distinctive, that is, the shape is quite unusual for that type of product. If the packaging is not unusual, then acquired distinctiveness must be shown. Unlike some countries, the USPTO practice is to accept only one view (not multiple views) of a three-dimensional shape as the trade mark drawing in the application. This is usually a perspective view showing as much of the product shape as possible. Additional details, not easily shown in the drawing, can be included in the description of the mark.

The USPTO will register a non-functional combination of sounds on the Principal Register as a mark for goods or services. The sound mark must be described in detail in the application. An actual recording of the sound must also be filed. There is no formal requirement that acquired distinctiveness be shown. However, the USPTO examiner may require some explanation on how the consumers will view the sound as an indication of origin.

An example is the famous Tarzan yell, owned by Edgar Rice Burroughs, for a toy action figure which emitted that yell. The examiner asked for evidence that the yell was associated with the character and was impressed by the fact that the action figure box prominently referred to the yell as a feature of the product. USPTO rules forbid registration of marks that resemble or imitate sounds emitted in the normal course of operation of the goods concerned, such as a chirping sound of a telephone, unless acquired distinctiveness can be shown.

Like sound marks, the USPTO will register non-functional scent marks on the Principal Register, so long as the scent is clearly described in words in the application, including the manner in which the scent is used for the product or services. The USPTO also requires that an actual specimen of the use be submitted, such as the actual product having the scent, so that the examiner can smell the scent and confirm that the description of the scent in words is accurate. The USPTO will not register marks consisting of scents for products, such as perfume, in which the scent is the essential functional characteristic of the product. Typical scent marks are unusual for the product concerned, for example a cherry scent for synthetic lubricants for vehicles.

The USPTO will register, on the Principal Register, marks that include motion. A typical example is the animated video sequence, in the opening credits of a movie, in which the studio's logo moves or changes. USPTO rules permit the applicant to submit a drawing which depicts either a single point in the moving sequence or up to five freeze frames showing various points in the moving sequence, whichever best depicts the commercial impression of the mark, together with a detailed written description. The required specimen should show the entire sequence, such as a video clip, a series of still photos, or a series of screen shots. An example is an eight-second animated logo video in the opening credits in movies featuring an unseen vehicle driving down a road and lightning striking a tree, and a word mark, Jerry Bruckheimer Films, as shown in five still images from the video.

The USPTO does not view holograms as marks, unless the applicant presents persuasive evidence that the consumer will recognise the hologram as a mark. If, as is usually the case, the hologram presents two or more views, the USPTO will also refuse registration on grounds that the application seeks registration of more than one mark.

David Ehrlich Fross Zelnick Lehrman & Zissu New York