April 2002

David SNOWDEN

Module Title: Intellectual Property

Module Number: LW 556

Course Convenor: Alan Story

Number of words: 4786

Intellectual Property Dissertation

The registration of colours and scents as trademarks

Abstract

Trademark protection has developed to include ‘non-visual’ marks such as sounds, colours and scents. The aim of this dissertation is to demonstrate that the current trend to extend trademark protection to colours and scents in various Western legal systems is undesired.

In approaching the matter, I will first seek to argue that trademarking colours and scents is legally a thorny task. Both types of marks encounter their own legal problems as to their registration, even though both types have been allowed protection under strict case-law criteria.

The second axis of my argument will be concerned with showing that trademarking colours and scents is not justified by policy reasons or when viewed against the traditional justification for trademarks, and that it thus contributes unreasonably to the overprotection of intellectual property.

INTRODUCTION

The area of trademarks has been developing extensively in the last decades. Trademarks are signs which serve the purpose of indicating the origin or manufacturer of the goods on which they are applied. In almost all jurisdictions, when such signs are capable of being represented graphically and distinguish the goods and services of one undertaking from those of others, they will be able to be registered and thus protected under the laws of registered trademarks.[1] While trademarks were mostly composed of words and logos, recent developments in the law and in consumerism trends have lead to the emergence of new forms of trademarks, the most controversial ones being colours and scents.

Colours marks, although refused for registration for many years, have now become an available form of registered trademarks. Colours have been registered in the UK, with the registration of the colour silver on connection with anthracite briquettes,[2] the colour red applied to the pin of a shackle[3] or three red bands on the handle of tennis and squash rackets,[4] for example.

In the USA, the first colour to be registered was pink as applied to residential fibrous glass insulation, in In re Owens-Corning Fiberglass Corp.[5]

In many countries, domestic legislation includes single colours as a possible sign capable of being registered (including France, Germany and Australia) while a number of others refuse their registration (including Mexico, Brazil, South Korea, China, Taiwan and Japan).[6]

The registration of scents as trademarks has developed little appeal in recent years, in spite of some strong academic comments encouraging its development. In the UK the registrar has accepted the registration of scents as various as that of rose applied to tyres[7] and the scent of beer associated with darts.[8] But recently it has proved more difficult to obtain protection by registration, as demonstrated by the rejection of an application for an aroma of cinnamon used on pieces of furniture.[9]

In the USA the case which operated as a breakthrough in the area of registration of scents as trademark was that of In re Clarke[10]. In this appeal decision the United States Patent and Trademark Office Trademark Trial and Appeal Board issued for the first time a trademark for a fragrance described as a ‘high impact, fresh, floral fragrance reminiscent of Plumeria blossoms’[11], applied on embroidery yarn.

More recently, in the jurisdictional order of the European Union, the Office for Harmonisation in the Internal Market had accepted the registration of the scent of freshly cut grass applied to tennis balls.[12]

Since these few isolated cases, some authors have expressed their astonishment with regards to the lack of applications to register scents[13] and colours as trademarks. This is however not surprising in the light of the technical difficulties which an applicant may have to go through in seeking registration of a colour or a scent.

By using case law from various jurisdictions, it will be sought to demonstrate that both colours and scents are unsuitable for registration as trademarks, not only because registration should be legally and technically almost impossible (1), but also in the light of the inaptitude of both colours and scents to function as trademarks (2).

1. THE LEGAL DIFFICULTIES IN REGISTERING COLOURS AND SCENTS AS TRADEMARKS

1.1 Colours

Under USA and UK law colours are impliedly recognised as having the potential of being ‘signs’ for the purpose of trademark.[14] In spite of a rise in registration of colours in both these countries and others, this trend can be criticised for failing to be legally justified. Indeed, legal requirements for the registration of trademarks (graphic representation, distinctiveness, and in the USA, a lack of functionality) can be strongly argued to be not satisfied by colours. The registration of colours, even if valid, creates further problems whenever actions for infringement are brought.

The USA judgment of Qualitex Co. v Jacobson Products Co. Inc.[15]provides a solid base on which to analyse the legal reasons in denying trademark registration to colours. This decision of the Supreme Court is being used in this analysis because it accurately illustrates the various points of law which need to be overcome in granting registration of a trademark. But its use is mostly due to the fact that the criticisms which can be made of the various points of law considered by the Supreme Court are not specific to the legal system of the USA, but applicable to most countries endowed with a similar intellectual property regime.

Qualitex Co. v Jacobson Products Co. Inc. greatly expanded the scope of protection of colours under trademark laws, by allowing colour alone to be registered in the USA, where a secondary meaning[16] and a lack of functionality can be demonstrated.

Prior to this decision, case-law had been contradictory in its content. The Lanham Act of 1946[17] heralded a liberating effect on the trademark regulations by broadening the definition of what was to be understood by trademark, which was to include any ‘symbol or device.’[18] But it was not until 1985 that trademark protection was granted to a colour, in In re Owens-Corning Fiberglass Corp.[19] The reasoning of the decision was however soon followed by cases denying protection of colour alone.[20] The Qualitex decision had the benefit of allaying the confusion induced by the conflicting judgments. Green-gold colour had been used by Qualitex on their dry-cleaning press pads since 1957 and registered as a trademark in 1991. But in 1989 Jacobson had started selling its own press pads, using a very similar colour. Qualitex decided to bring a suit to enforce its registered trademark against infringement by Jacobson, and the District Court held that Qualitex’s trademark had been infringed by Jacobson.[21] Jacobson appealed and the Court of Appeal for the Ninth Circuit cancelled the registration of Qualitex’s trademark, and affirmed the infringement on the basis of trade dress protection.[22] But the Supreme Court reversed the Court of Appeal’s decision. It stated that colours were not ‘inherently distinctive’, in that colours do not as such indicate to a consumer that they refer to a particular brand. Proof of secondary meaning, that is, that consumers had associated the colour with the manufacturer, was therefore necessary to make the colour distinctive, which the Supreme Court inferred by merely reiterating the finding of secondary meaning by the District Court (which had based it on the evidence of advertisement of the mark, advertising expenditures, length and exclusivity of use and sales success).[23] The second requirement which needed to be satisfied was that of lack of functionality.[24] The functionality doctrine prevents the registration of a trademark that has a functional feature, that is, if registered, it would confer an illegitimate monopoly on a characteristic which may be necessary for other manufacturers within the particular trading field.[25] The Supreme Court accepted the District Court’s reasoning that the colour used by Qualitex was not functional, thus concluding that it had been properly registered.

As mentioned above, the grounds on which the decision was made can be argued to be specious and therefore void, in particular regarding the issue of secondary meaning. Other arguments concerning graphic representation and infringement need to be addressed.

Secondary meaning / Acquiring distinctiveness through use

The reasoning of the Supreme Court on the question of secondary meaning is fallacious because the test adopted fails to satisfy what the notion of secondary meaning really signifies. The Supreme Court merely accepted the findings of the District Court that Qualitex had developed secondary meaning on the basis of a number of factors which can be strongly argued to be extraneous to the notion of ‘secondary meaning.’[26] As indicated above the District Court had considered factual evidence relating to advertisement expenditures and exclusivity of use[27] in concluding that Qualitex’s colour had acquired secondary meaning. Although similar tests have been used in various other cases,[28] relying on such evidence does not demonstrate a consumer’s association of the mark with the manufacturer of the product. To that end, it is hence contended that the most accurate proof of distinctiveness lies in a consumer survey.[29]

Consumer surveys have been acknowledged to provide a more accurate approach in determining the distinctiveness of a mark.[30] Indeed, surveys constitute the most reliable indication of distinctiveness, since they have the advantage of obtaining the relevant information directly from the source, as opposed to reasonings based on indirect and sometimes unreliable data.

Although the above reasoning demonstrates that the judicial trend to evaluate the distinctiveness of a mark by solely relying on figures such as advertisement expenditure may well be erroneous, consumer surveys are also endowed with flaws. The issue resides in the threshold to be accepted in establishing distinctiveness. While it is obvious that obtaining a result of 100 per cent at a survey will indicate beyond doubt that all the respondents identify the mark with its manufacturer, thus conferring it secondary meaning, it is less clear what is to be inferred from an inferior result. Even if 100 per cent is practically too high a figure to be required, can 50 per cent or 60 per cent be held to be enough to conclude that distinctiveness is demonstrated? These concerns are the subject of academic debate, and add substantial objections to judgments such as that of Qualitex and more generally to the capability of registering colours as trademarks.[31]

Graphic representation of a colour – the Swiss view

The issue of graphic representation of a colour was not addressed by the Supreme Court in Qualitex. In spite of the appearance that this is a settled issue, it can nonetheless be argued that a colour is incapable of being graphically represented, thus preventing its registration as a trademark. This contention was brought forward by the Federal Board for intellectual property matters (FB) in Switzerland.[32] The FB stated that the technical definition of a colour was ‘an impression produced on the eyes by the light coming from light sources or diffused by the body’[33] and that it could therefore not be perceived independently from the object to which it was applied. A graphical representation of the colour per se was thus held to be technically impossible, precluding registration as a trademark.

This strong argument should be considered by courts and legislators alike, and can only comfort the contention that colours should be denied registration as trademarks.

The problems raised in the event of infringement actions

When the owner of a registered trademark in a colour brings an infringement action upon the owner of another colour, many problematic issues are bound to arise. The most important one is that enshrined in the shade confusion theory. The theory states that, assuming protection is granted to colour, the existence of only a limited number of colours leads to constant uncertainty about whether a given shade infringed on another shade.[34] The limited number of shades in one particular colour is very likely to cause infringement procedures very arduous to litigate, thereby hampering an efficient judicial process.[35] Indeed, courts would easily be faced with the difficult task of determining how different a colour shade needs to be not to cause confusion.

The issue of functionality (in the USA)

By declaring the colour green-gold to be non-functional, the Supreme Court accepted that it had been properly registered. But in accepting the utilitarian test used by the District Court, the Supreme Court failed to clarify the test for functionality. It has indeed been argued that the Court ought to have also considered aesthetic functionality, that is, whether the colour played an important role in the purchasing decisions of consumers. If the colour does cause consumers to be more attracted to the product, then further considerations arise in relation to the competitive need for that particular colour within the field of trade. The more competitive the colour happens to be, the more the probabilities are that it will be functional, and hence denied registration as a trademark.[36]

1.2 Scents

In the same way as colours do, scents have the possibility of becoming registered trademarks under the wording of USA and UK trademark legislation. But it will be demonstrated that, in close analogy to colours, scents do not fulfil the criteria for registration and that there are therefore persuasive arguments that the registration of scents which have been already made were invalid. Scents also create further problems when addressing questions of infringement of trademark have to be addressed.

The graphic representation of a scent

It has been recognised that the requirement of graphic representation of a scent is the most important obstacle in seeking its registration as a trademark.[37] The pending European Court of Justice[38] case Ralf Sieckmann v Deutsches Patent-und Markenamt[39]illustrates very well the current impossibility to represent a scent graphically. Not only does it provide the discussion with a good example of what applicants may be faced with, but it also allows to list some of the means supposedly available for the graphical representation of a scent. In this case M. Sieckmann had applied to register a scent mark at the German equivalent of the UK Patent Office, the Deutsches Patent und Markennamt. For the purpose of its registration, the scent had been ‘described’ by the applicant in three different manners: by its chemical formula[40], by the supply of a sample and by a written description.[41] The scent was rejected for registration as a trademark on the grounds that it failed to satisfy the requirement of graphic representation. M. Sieckmann subsequently appealed to the Bundespatentgericht (Federal Patent Court). The latter sought clarifications from the ECJ as to whether, inter alia, a scent could satisfy the condition of graphic representation by either one or a combination of the ways that the applicant has submitted (chemical formula, sample or written description).

In his conclusions, Advocate General Ruiz-Jarabo Colomer explained that the requirement for graphic representation was necessary to maintain the principle of judicial certainty.[42] By requesting a graphical representation when registering a trademark, competitors can inform themselves on the nature and extent of the registered mark, thus minimising the possible risks of infringement they may run into when developing their own trademarks. To this end, the graphic representation needs to be both clear and precise in order to infer without doubt the object of the sought exclusivity.[43]

Applying these guidelines to the facts, Advocate General Ruiz-Jarabo Colomer first argued that a chemical formula does not represent the scent of a substance[44] but corresponds to the substance per se.[45] Since only qualified individuals would be able to deduce a scent from a mere chemical formula, such a representation of a scent would undoubtedly run against the notions of clarity and preciseness.[46] Advocate General Ruiz-Jarabo Colomer then explained that the written description of a scent was tainted with subjectivity. Expressions such as ‘balsamic-fruity’ or ‘hints of cinnamon’, however meaningful they may be to some individuals, are nonetheless blatantly an appreciation based on personal experience. Indeed language cannot effectively communicate the description of a scent, and this equally applies when describing a scent in comparison with another one.[47] Such subjectivity was thus convincingly demonstrated as preventing clarity and preciseness.[48] Thirdly, the provision of a sample of the scent, leaving aside the fact that it did not constitute a representation, introduced important practical problems. Due to the intrinsic nature of scents – the volatility of its components – a sample would very rapidly lose its strength and eventually disappear with time.[49] Finally Advocate General Ruiz-Jarabo Colomer added that the submission of a combination of any of the three types of “representations” would only result in rendering the overall result all the more unclear and imprecise,[50] and concluded that scents were therefore not able to be represented graphically at the present time.[51]

Advocate General Ruiz-Jarabo Colomer’s opinion is to be acclaimed for its clarity, and it demonstrates unambiguously that scents cannot be represented graphically by means of a chemical formula, written description or provision of a sample. For the purpose of this discussion, it is necessary to add that a potentially important way of achieving the graphical representation of a scent resides in the use of a technique known as Gas Chromatography/Mass Spectroscopy (GC/MS) analysis.[52] This involves the separation of the volatile constituents of a scent followed by the identification of each of the constituents. The identification is achieved by comparing the separated constituents with the MS data available.[53] This technology is used because the mass (M) of each constituent is an important distinguishing characteristic of every chemical compound, in that each constituent has its own distinctive Mass Spectrum. The result of a GC/MS analysis takes the form of a print representing each separated and identified component, thus making it a graphic representation of the scent thus analysed.

However this technology is not foolproof and cannot therefore be relied upon to render an exact graphic representation of a scent. Firstly, the separation of the constituents may be imperfect or inefficient. Secondly, some constituents may be present in such minute amounts that they are simply not detected. This is in fact more critical than it may appear because minute amounts of a powerful odorant can make a considerable difference to the overall perceived odour.[54] Finally, the identification of the constituents is dependent on the MS data available at the moment of the analysis. Thus a constituent will remain unidentified if it is not already present in the database of known compounds.