Trade mark is one of the branches of intellectual property. It is a sign which distinguishes the goods and services of one trader from those of another. A mark includes words, logos, pictures, names, letters, numbers or a combination of these. Below are examples of trade marks that people are familiar with:
Trade business is ever-changing; it does not remain constant especially with the current advancement of technology. Due to its harshly competitive nature, entrepreneurs are constantly searching for novel means to identify and safeguard their brands thus giving births to a new groups of trade marks called non-traditional or non-conventional trade marks.
So, what is a non-traditional trademark? Is it the same as the marks shown above? Non-traditional trademark is a mark that does not belong within any existing conventional category of trade marks which includes but not limited to sound, scent, taste and motion. These are the marks that has risen thanks to the creativity of trade owners and in order to enhance the scope of mark owners’ rights, some nations have allowed for the registration of such marks.
Among all the nations in the world, the United States could be said to be the first country that has allowed for the registration and protection of non-conventional marks through the Lanham Act. Other countries such as Canada, Japan, and China are relatively new in managing non-conventional trade marks and rumour has it that Malaysia is also intending to allow the registration of these trade marks. In 2016, MYIPO announced that they intended to amend the ‘outdated’ Trade Marks Act 1976 and the new Act should be in force in the first quarter of 2018. Alas, here we are in the second quarter of 2018 yet the supposedly new Trade Marks Act 1976 is nowhere to be seen or heard. Disappointed, but not surprised though. It will be interesting to see how MYIPO will set the criteria of non-traditional marks and how to manage them so the new amendments is surely anticipated.
Traditionally, trade marks must be capable of being presented graphically. Meaning that it must be something that could only be perceived visually thus sounds, tastes and scents are not eligible as a trade mark. However, as time passes, international treatise such as TRIPS and Singapore Treaty on the Law of Trademarks recognised marks perceptible by other senses as trade marks.
In the United States, quite a number of non-conventional marks have been given protection. If you are a movie lover, you would know of Metro Goldwyn Mayer’s lion roar at the beginning of their movies. That roar has been registered and is protected as a sound trade mark. The famous Nokia start-up ringtone? Yes, that has been registered and protected as a sound mark as well. Oh, and also the widely-known Tarzan’s yell. That too, is a registered sound mark owned by Edgar Rice Burroughs, Inc.
Scent is also considered as a mark and is registrable in US. However, unlike the other categories of non-conventional mark, the olfaction mark has few registrations in the US. Among the few applications that was granted sound trade mark are the minty smell of Hisamitsu’s pain-relief patches, toothbrushes with the scent of strawberries and bubble gum scented sandals.
Although taste mark is registrable under the Lanham Act in US, there is a huge problem in accepting the registration of such mark due to the fact that it is not inherently distinctive and is generally viewed as a characteristic of the goods. Rarely are there attempts to register taste marks because of the difficulty of successfully proving a non-functional purpose.
Another non-traditional mark is motion marks. Motion marks is depicted as movement of objects, figures or a combination thereof. Marks of this type may be presented as film, recordings or a moving logo. Motion mark is significant especially in this digital age. One of the eminent motion trade mark is that of Nokia’s. Nokia was granted trade mark protection on its handshake motion which appeared in its old model during start-up. Motion mark has been accepted as a trade mark in the US decades ago, with the first-ever motion mark registered in 1957. Northwestern Bank of Commerce was granted registration for its mark of a coin spinning on top of a hard surface by the US Patent and Trademark Office.
Allowing registrations for unconventional marks indeed would enhance the law to be in line with current developments but it pose challenges as well. For example, trade marks need to be gazetted and keep in the register. Of course, it is easy to keep register for graphics but how about smells or tastes? How do you keep those in the register? Merely describing the smells and taste would not be enough as these two involve the use of other sensory organs. A smell could not be stored for a long period of time. It gets affected by temperature, humidity and wind conditions and will eventually disperse. In the case of sound marks, the patent offices of other countries do accept a description of the sound by musical notation. However, it must be noted that not all people can read musical sheets. As for motion marks such as in the case of Nokia, the mark is described through a sequence of pictures. However, stills of a motion mark do not demonstrate in its true nature and how it will be used in commerce.
Nevertheless, it is interesting to see how the lawmakers of our country will incorporate these new marks into the Trade Marks Act 1976. Of course, there are pros and cons to every amendment but perhaps it is time for Malaysia to embrace these new marks and take a step further into the future.
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Gile, R. (n.d.). Sound Trademarks – Nokia Gets a Registered Trademark for its Default Ring Tone. Retrieved from http://www.vegastrademarkattorney.com/2007/09/sound-trademarks-nokia-gets-registered.html
Challenging Aspects of Protecting of Non-Traditional Trademarks: The Five Senses and Trademarks. (2017, February 02). Retrieved from http://www.ipwatchdog.com/2017/02/03/challenging-aspects-non-traditional-trademarks-five-senses/id=77676/
Yean, L. Y., & Ying, L. S. (n.d.). PROTECTION OF NON – TRADITIONAL TRADE MARKS – A REALITY SOON IN MALAYSIA.
USPTO Office of Public Affairs. (n.d.). United States Patent and Trademark Office. Retrieved from https://www.uspto.gov/