non-traditional trade markscadbury limited v beacon sweets & chocolates (pty) ltd (unreported...

Non-traditional Trade Marks

MODERATORS:Megan Moerdijk | Partner – Adams & AdamsNicolette Biggar | Partner – Adams & Adams

A D A M S & A D A M S | A F R I C A N E T W O R K M E E T I N G 2 0 1 9

WHAT CONSTITUTES A TRADE MARK:“Any sign capable of being represented graphically, including a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour or container for goods, or any combination of the aforementioned.”

Signature: Name: Device: Shape:

Examples of graphic representations:

CAROLINA HERRERA


A trade mark is defined as “a mark used or proposed to beused by a person in relation to goods or services for thepurpose of distinguishing the goods or services, in relationto which the mark is used, or proposed to be, from thesame kind of goods or services, connected in the course oftrade with any other person”.


NON-TRADITIONAL TRADE MARKS▪ SMELL

▪ SOUND

▪ TASTE

▪ MOVING IMAGES, HOLOGRAMS AND GESTURES

▪ SHAPE [3D]

▪ COLOUR


SMELL▪ How do you visually represent a smell and show it as distinctive from the product itself?

▪ Since the scent of a perfume is the very essence of the product, CHANEL cannot register the perfume as a trade mark.

▪ However, since the smell of newly mowed grass is not the essence of tennis balls, an application to register that smell, in relation to tennis balls, has been successful in Europe.


SOUNDOSCILLOGRAM, SPECTRUM, SPECTOGRAM and SONOGRAM.▪ 20th Century Fox Fanfare (sound mark)


TASTEEasier to represent graphically, but difficult to define how taste can be a trade mark if consumers only taste goods after purchase.


MOVING IMAGES, HOLOGRAMS AND GESTURESRegistration usually requires the use of a sequence of pictures or drawings to depict how the trade mark functions.

Moving Images: Hand Gestures: Holograms:


SHAPES▪ Written description, clear and unambiguous.

▪ Should shape, or three-dimensional marks be left to design law?


COLOUR▪ Pictorial representation and written endorsement. ▪ A line drawing and appropriate endorsement.

▪ Pantone code.

Examples:1. (Colour BROWN) in the name of UNITED PARCEL SERVICE OF AMERICA, INC.2. (Colour Turquoise) in the name of H.J. HEINZ COMPANY


Graphical representation vs represented in any appropriateform using generally available technology.

What you see is what you get.

“Sieckmann criteria”

Clear, precise, self-contained, easily accessible, intelligible,durable and objective.


At a recent conference on Intellectual Property in Geneva,a Professor Calboli from Texas University stated that shewas sceptical about non-traditional trade marks and thatthe perspective of policy-makers in the public interests isnot necessarily identical to that of right holders.

▪ Does the granting of virtually perpetual monopoly to one right holder to a given shape, colour or scent achieve the public policy objectives of trade mark law?

THANK YOU

Contact:[email protected]@adams.africa


PANELLIST:Fleurette Coetzee – South Africa

Strictly confidential | 15

Section 2(1) of the Trade Marks Act, Act 193 of 1994

Section 2(1) of the Act defines a “mark” as:

“…any sign capable of being represented graphically, including a device, name,signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour orcontainer for goods or any combination of the aforementioned.”


Regulation 13(5) and (6) of the Act

Regulation 13(5) and (6) may be applicable to certain non-traditional trade marks:

“13. Representation of marks…

(5) Where a representation cannot be given in the manner aforesaid, a specimen or copy of the trade mark may be sent either of full size or on a reduced scale and in such form as the Registrar may think most convenient

(6) The Registrar may also call for a deposit in the office of a specimen or copy of any trade mark which cannot conveniently be shown by a representation, and may refer to it in the register in such manner as he may think fit.”


Notice on Non-Traditional Trade Marks

The office practice notice with regard to the lodging of non-traditional trade marks (published February2009) should be consulted when lodging any one of the following:

• Three-dimensional trade marks;• Colour trade marks;• Holograms;• Motion/multimedia trade marks;• Position trade marks;• Gesture trade marks;• Sound trade marks;• Olfactory (smell/scent) trade marks;• Taste trade marks; and• Texture trade marks.


Notice on Non-Traditional Trade Marks (continued)

Extract – Purpose of Notice:

• It is important to note that this notice simply provides lodgement requirements (in the formof office guidelines) in respect of non-traditional trade marks.


Notice on Non-Traditional Trade Marks (continued)

• The registrability of non-traditional trade marks will be determined upon formal andsubstantive examination of such applications, in the usual manner (as all otherapplications).

• A non-traditional trade mark must therefore still meet the threshold of registrability as atrade mark (including “Sieckmann criteria”)… what does this mean…?

Smell marks for “perfumes”…? (Y/N)

Taste marks for “food”…? (Y/N)


Sieckmann* Criteria

1. Clear2. Precise3. Self-Contained4. Easily Accessible5. Intelligible6. Durable7. Objective

* Ralf Sieckmann v Deutsches Patentund Markenamt [2002] ECR I-11737


Content of Notice

Extract – 3D Marks:

Extract – Colour Marks:


Examples of Non-Traditional Trade Marks

3D Marks:

Colour Marks:“The mark is limited to the colour BLUE, Pantone 2995…, substantially as shownon the representation affixed to the form of application, to be applied to labels,containers and other packaging materials for the goods covered by theapplication...”

… Registrable in RSA…?


A Further Look at Colour Trade Marks

o Libertel Groep BV v Benelux-Merkenbureau C-104/01 (ECJ):

• The applicant would have to provide evidence of use that the colour(s) as appliedfor is capable of distinguishing in respect of each and every item covered by thespecifications.

o Societe Des Produits Nestle SA v Cadbury UK Ltd [2014] RPC 7 202 (CA):

• An endorsement accompanying a colour trade mark should not include anunknown number of signs which is inconsistent with the definition of a trade mark.


A Further Look at Colour Trade Marks (continued)

o Cadbury Limited v Beacon Sweets & Chocolates (Pty) Ltd (Unreported Tribunal of theOffice of the Registrar):

• A single colour, being a word or the colour itself, is generally not capable ofdistinguishing.

• Furthermore, the colour depletion doctrine should be borne in mind. This doctrinestates that the registration of colour trade marks should not be so that it does notallow for others to make bona fide use of colours.


Content of Notice (continued)

Extract – Holograms:

Extract – Motion Marks:


Examples of Non-Traditional Trade Marks (continued)

Hologram Marks:

Representation on Register:Actual use:



Motion Marks:“The trade mark is an animation mark substantially as contained: in theelectronic (digital) file of the motion mark accompanying this application, in therepresentations of the still images (extracted from the motion mark) affixed tothe application, and as defined in this endorsement. The movement of themark is described as follows: In frames 1 to 8, the animated red polygonemanates sideways from a central white circle containing a red speech mark.In frames 9 to 18, the red polygon rotates once clockwise around the centralcircle. In frames 19 to 25, the red polygon shuts from top to bottom. In frames26 to 30, the red polygon reopens from top to bottom. The black and whitebackgrounds shown in the animation do not form part of the mark and maycontain material of descriptive or non distinctive character, by a trade markregistered in the name of the applicant, or by a registered trade mark of whichthe applicant is a permitted user thereof. The mark is in the colours appearingin the representation in the TM1 Form and as contained in the electronic file,accompanying this application. The movement of the polygon around acentral circle is an essential and distinctive feature of the mark and thespeech mark contained inside the central circle is not a feature of the mark.”



Extract – Position Marks:

Extract – Gesture Marks:



Position Marks:

Gesture Marks:

• Viewed as a specific type of “motion mark”...

…this example is not on the RSA Register.



Extract – Sound Marks:

Extract – Smell Marks:



Sound Marks:

Smell Marks:

…Currently non on RSA Register…

“The sound mark consists generally of a sequence of 6 musical notes in unisono with a driving forward,clear melody and rhythmic structure and a bright and pointed timbre. The notation shows a 4/4 time, atempo of 94 bpm and is written on the treble clef. The sequence in unisono starts with a fast kind of atriple drag (triple stroke) on D and causes the sequence being perceived only as a 6-note-sequence. Thedrag is followed by ascending steps (E-G), change the direction on the G and goes with a descendingleap again down to E and a step to D, before it ends with an ascending fourth again on G as the finalleap. Overall the sequence has a wavelike contour within the range of a fourth. ; The mark consists of asound, an audible reproduction of which is annexed as a digital recording. The original recording may beinspected during office hours by prior appointment at Adams & Adams Attorneys, located at LynnwoodBridge, 4 Daventry Street, Lynnwood Manor, Pretoria, Gauteng, Republic of South Africa.”



Extract – Taste Marks:

Extract – Texture Marks:



Taste Marks:


Texture Marks:



Challenges from a Registry Perspective

• How do we deal with lodgement, searching, retrieving/viewing and examination ofnon-traditional trade marks, specifically non-visual marks?

• How do we specifically deal with the searching and examination of sound marks?Software with recognition capabilities?

• How do we deal with viewing and retrieval of 3D, motion and sound marks in theelectronic Register?

• How do we deal with representing non-traditional trade marks when publishing it foropposition purposes?

• How do we deal with representing non-traditional trade marks on an electronicregistration certificate?

THANK YOU

Contact:[email protected]


PANELLIST:Nawala Kamati – Namibia

OVERVIEW

1. Background & introduction 2. Definition of ‘mark’ – section 1313. Non-traditional marks – past and present

OVERVIEW

1. Background & introduction 2. Definition of ‘mark’ – section 131 3. Non-traditional marks – past and present

Background & information

• Until recently, the registration and enforcement of trademarks was regulated by the Trade Marks Act 48 of 1973 (the “Old Act”)

• ‘Mark’ was defined in section 2 of the Old Act to include “a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof or a container for goods”


• The definition of a mark under the Old Act was conservative and, as was typical of the time, did not refer to non-traditional marks (which are also referred to as non-conventional marks)

• It did, however, include a reference to container for goods, which our registry used in practice to allow for the registration of shape and 3D-trademarks


• Non-traditional trademarks can generally be described as any new type of trademark that does not fall within a pre-existing conventional category of trademark, and which may be difficult to register, although it can uniquely identify and distinguish commercial products or services

• Examples are: logos, pictures, symbols, colours, shape, holograms, textures, tastes, scents, sounds


• Non-traditional marks can be divided into: visible signs, e.g. colours, shapes, moving

images or holograms; and

non-visible signs, e.g. sounds, smells, tastes, textures.

OVERVIEW


Industrial Property Act, 2012

• On 1 August 2018, the Industrial Property Act 1 of 2012 (the “IPA”)came into force and superseded the Old Act

• Section 131 of the IPA defines a ‘mark’ to mean “any sign capable ofbeing represented visually, including a device, name, signature, word,letter, numeral, figurative element, shape, colour or container for goods,or any combination of such signs”


• As is evident from section 131, the new definition for ‘marks’ isbroader than that under the Old Act as it specifically (includes non-traditional marks like) shape and

colour


refers to signs that are capable of representation, whichincludes logos, pictures, figurative elements and symbols

OVERVIEW


Non-traditional marks – past & present• As indicated above, the Namibian registry allowed

the registration of shape marks even under the Old Act

• Examples of such registrations are:– 1997/1216 Toblerone (name and logo)

– 2013/0179 Coca Cola

Non-traditional marks – past & present– AP/M/2013/1701 ELEGANCE (3D Device)

– 2016/0424 WYBOROWA 3D BOTTLE

Non-traditional marks – past & present

– 2016/1521 BEEFEATER 3D BOTTLE

– 2016/1517 CHIVAS REGAL 12 YO BOX 3D

– 2017/1306 SHELL SERVICE STATION 3-D

Non-traditional marks – past & present - 2017/1306 SHELL SERVICE STATION 3-D

• Under the IPA, the following non-traditionalmark has been filed– 2018/2854 JAMESON 3D BOTLLE (2018)

Non-traditional marks – past & present

• From the examples given, it is clear that theNamibian registry allows for the registration ofsome non-traditional marks

• However, in terms of the definition of a markin section 131 of the IPA, it is unlikely that theNamibian registry will allow the registration ofnon-visible marks like sounds and smells

THANK YOU

Contact:[email protected]

Non-traditional trade marks in Kenya and Rwanda

PANELLIST:Lorna Mbatia – Kenya

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Trade marks serve as source identifiers bydistinguishing the goods and services of oneperson from those of another.

Traditional trade marks consists of word, logo or acombination of both.

Non-traditional marks on the other hand consistof: Trade dress, colour marks, scent/olfactorymarks, sound marks, taste marks, touch,motion/hologram marks, position marks andmotion marks, among others.

INTRODUCTION

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DEFINITIONS

A “mark” includes a distinguishing guise, slogan,device, brand, heading, label, ticket, name,signature, word, letter or numeral or anycombination thereof whether rendered in two-dimensional or three-dimensional form.

Traditional marks containing words that describecolours such as “Red” and “Orange are capableof being registered if the applicant agrees todisclaim the right to the use of the wordsseparately and apart from the mark.

1. KENYA

TMA No. 84497

57

A “sign” includes: all forms of denominations including words, proper names,

letters, figures and acronyms; figurative elements such as designs, relief, product forms or

the relevant packaging; colours or combinations of colours; any combination of aforementioned signs.

2. RWANDA

58

Therefore a “trade mark” is any mark that is used a source identifier for goods or services; and falls within the statutory definitions above.

Thus, any sign that does not fall within the above definitions will not be regarded as a trade mark, regardless of how the sign is used.

Definitions Cont’d

In both countries, trade marks must not only be

distinctive (whether or not such distinctiveness is

inherent or acquired) but also be capable of being visually represented in order to be registrable.

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To be registrable a mark should be either::

The name of a company, individual or firm,represented in a special or particular manner; or

The signature of the applicant for registration orsome predecessor in his business; or

An invented word or invented words; or

A word or words having no direct reference tothe character or quality of the goods, and notbeing according to its ordinary signification ageographical name or a surname; or

Any other distinctive mark.

Registrability: Kenya

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REGISTRABILITY: Rwanda

it is distinctive; it is not confusing; it is not misleading or deceptive; and if it is not descriptive.

The essential particulars are:

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NON-TRADITIONAL MARKS REGISTRABLE IN KENYA AND RWANDA

A. Trade Dress

A Trade Dress is registrable as a Distinguishing

Guise.

A distinguishing guise identifies the unique shape of a product or its package

(all aspects of the packaging). Also referred to as Get-up (Strategic Industries

Limited v Solpia Kenya Limited [2019] eKLR) or Trade Dress (Rok Industries

Limited v Annum Trading Company Ltd [2017] eKLR

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Trade Dress Cont’d

A proprietor must show that they “have a reputation for the Get –up or Trade Dress”.

The Trade Dress must be recognized by the public as distinctive specifically of the proprietor’s goods or services.

RW /T/2016/000478

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May consist solely of one or more colours used onparticular products or product packaging.

They are not inherently distinctive and registrabilitydepends on acquired distinctiveness through use

Where an application is made for the registration ofa colour mark, the applicant must indicate thecolours making

B. COLOUR MARKS

Relevant code(s) from

an international

colour identification

system are preferred

MA/T/1/086681

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C. 3-D MARKS

The choice of a shape must be one which: Does not have any characteristic of the

product; Is not within the norm or customary

practice of the trade concerned of a necessary design to obtain a technical or

functional result; or Is likely to give substantial advantage or

value to the goods

These include the shapes of goods, the packaging or other representation of goods in three dimensional form, that is, height, width and depth.

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CONCLUSION

In both Rwanda and Kenya, non-traditional marks are registrable if they fall within the statutory definition of a mark or sign, are distinctive and can be represented visually/graphically.

In instances where an applicant is issued with a refusal notice due to lack of the essential elements for registrability, arguments may be submitted to prove that the trade mark in question has indeed met the threshold for registrability as was the case in the registration of trade mark number MA/T/1/059166 for goods in class 20, 24, 25 and 35.

non-traditional trade markscadbury limited v beacon sweets & chocolates (pty) ltd (unreported...

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