Registration of "Non Traditional" Trade Marks

The UK Trade Marks Act and the European Community Trade Marks Regulation both provide that a "sign" capable of distinguishing the goods and services of one undertaking from another may be registered. Such signs are traditionally viewed as words or logos, or combinations of the two. However, "signs" are not restricted to such traditional marks and also extends to the registration of "non-traditional" marks such as slogans, 3-D shapes, colours and even music. Examples of well known registered "non traditional" trade marks include the colour turquoise in respect of Baked Beans (Heinz), the Direct Line Insurance "jingle" (sound mark) and the Coca-Cola bottle (3D shape mark).



The requirements for registration of "non-traditional" trade marks are the same as those for traditional marks. However, in practice, it is more difficult to register such marks. The difficulty lies in convincing the Trade Marks Registry (or Community Trade Mark Office) that the "signs" for which registration is sought are capable of distinguishing the goods/services of one undertaking from another. This is especially the case because the Trade Marks Registry (or CTM Office) are of the opinion that “non traditional” marks are not usually viewed as trade marks (designations of trade origin) by consumers, but merely as marketing or other promotional materials. A usual way to try to overcome such objections is to show that distinctiveness has been acquired by the mark following extensive use thereof. In other words, that the extensive use made of the mark had led to the mark being recognised in relation to those goods/services as originating from a certain company/undertaking. The case law in this area has not changed remarkably since the Libertel decision of the European Court of Justice in 2003 [Libertel Groep vs. Benelux Merkenbureau (case C-104/01)].

The evidential burden placed on the applicant in these cases is high, especially since it is not sufficient to merely show extensive use of the mark, but to show that the extensive use has led to acquired distinctiveness of the mark. Such evidence should be in the form of witness statements, surveys, attestations from trade bodies or trade journals etc. confirming the repute and distinctiveness that the mark has acquired and confirming that if another undertaking were to use the mark confusion as to the trade origin of the goods/services would likely arise.

Our recent experiences with applications to register “non traditional” marks, particularly 3D marks (shape marks), suggests that this evidential burden on the applicant is increasing. Where previously an amount of evidence to show acquired distinctiveness through use would have been sufficient, we are finding that similar evidence now is not serving to overcome the objections, with further evidence being required.

One manner in which to proceed with regard to shape marks is to consider the possibility of applying to register the shape as a UK or Community Registered Design. Assuming the shape that you intend to use is new and has individual character, then design registration is available for a maximum of 25 years (subject to renewals). The exclusivity period provided by the registered design allows an undertaking time to make extensive use of the mark and to document the distinctiveness that the mark is acquiring within the market by carrying out surveys and obtaining witness statements/attestations. An application to register the shape as a UK or Community Registered Trade Mark can then be filed when a large catalogue of evidence to show acquired distinctiveness has been gathered and thus the likelihood of successfully registering the mark increased, but in the meantime, the registered design offers exclusivity to the 3D shape and configuration of the design.

If you are providing products with a particularly distinctive shape, or a shape that people recognise as deriving from you, or you are providing goods/services under a particular colour or use a particular sounds or slogan for advertising, then it would be wise to keep detailed records of the use made of such marks and discuss the possibility of applying to register these trade marks.

We are always happy to advise in relation to your specific situation. Please get in touch for further information.