Trademarks: The Scope of Shapes and Smells Registration

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A. Introduction

The world we live in offers us numerous examples of smells and shapes.

Imagine you are in the internet visiting the website of Starbucks and you can smell the aroma of freshly roasted coffee-beans. Or you are buying tennis balls and you already can smell freshly cut grass. Worldwide people know the Coca Cola Company and remember the special shaped bottles. Or if you are visiting France you can buy a drink which is called Orangina in a small round shaped bottle. These are smells and shapes which are generally used and well known. However, one wonders whether a smell or a shape of a product can be registered as a trade mark. It therefore seems appropriate to look more closely into the phenomenon of smells and shapes as trade marks.

It is certain that trade marks are a company`s most valuable assets. They are an important part of a company`s intellectual property portfolio. Trade marks quickly become synonymous with the name of a company and the reputation.

Trade marks are a valuable marketing tool. Consumers base their purchasing decisions on the perceived quality on services that trade marks identify. 1

B. Definition of a trade mark

A trade mark is a main type of intellectual property. Intellectual property allows people to own their creativity and innovation in the same way that they can own physical property. You can divide trade marks into traditional and non-traditional ones, into individual and collective trade marks. I. Individual trade marks

An individual trade mark in the traditional way is any sign which can distinguish the goods and services of one trader from those of another. 2

¹ Scandia, Germania, Davis

http://www.scandiagermania.com/eng/trademark.faq.html

² Eisenmann, Grundriss Gewerblicher Rechtsschutz und Urheberrecht, p. 112.

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A sign includes words, logos, slogans, letters, numerals or symbols. In the last few years some new types of non-traditional trade marks were established. The trade mark protection is now also available for any signs designating the source of a product like appearance, shapes, sounds and smells, taste and touch.

The “ shape trade mark” can be a three-dimensional representation of the product itself, the container for the product, or the architectural design of a store or the shape of a label and not simply the words or the colours appearing on.

The trade mark of a scent can be the particular scent of the product itself or it is a scent that is applied or added to the product. ³ There are some examples of smell and shape trade marks. An all over the world very well known shape mark is a product of the company Kraft Foods Schweiz AG. They have registered a trade mark comprising the shape of interlocking triangles forming a rack with serrations in respect of chocolate confectionary. It is better known as the Toblerone chocolate bar. ⁴ The company Unicorn Products Limited have registered a scent mark which comprises the strong smell of beer wherein the smell is used for flights for darts. II. Collective trade marks

Collective trade marks distinguish one or more common characteristics of goods and services, which are originating from different companies. They mainly act as quality marks. An example is the wool mark. 5

C. Registration of a trade mark

You can only obtain exclusive ownership of a trade mark by registering it. The use and the development of the mark alone does not give you any rights.

³ International trade mark association http://www.inta.org/info/basics_nontrad.html

⁴ Dredge,

http://www.legalmart.com.au/topics/business/patents/info_tips/2f_examples_tm.asp

⁵ Eisenmann, Grundriss Gewerblicher Rechtsschutz und Urheberecht, p. 158.

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The trade mark registration gives you the possibility to defend yourself against third parties that wish to introduce an identical or similar mark for the same or similar goods or services onto the market. 6

The owner of a trade mark can control and be rewarded for its use and this encourages further innovation and creativity to the benefit of us all. 7

But an equal standard of trade mark protection could neither be achieved in the countries all over the world nor in the member states of the European Union. This is based upon the different structures of the legal systems of the countries. Therefore it was necessary to achieve uniform regulations for the registration of trade marks in the world and in Europe. 8

I. International Registration

The territorial connection is characteristic of the protection of intellectual property. The protection normally ends on the border of a country. Therefore an international trade mark system was built to reach international protection. This international trade mark system tries to coordinate and harmonize the different legal systems in the world. ⁹ 1. Legal Basis’ s and Provisions

The international trade mark system is based on different legal agreements. The most important agreements are the Paris Convention, the Madrid Agreement, the Madrid Protocol and the Trade-related aspects of intellectual property rights (TRIPS). These legal agreements create a minimum standard of trademark protection permitting the registration of trade marks worldwide. a. Paris Convention

The Paris Convention of 1883 is the oldest and most important international agreement. It has over hundred members.

⁶ Center Tone Consultancy, http://www.merkenregistratie.nl/english/ie/ie.htm

⁷ Kilian, Europäisches Wirtschaftsrecht, p. 280.

⁸ Bumiller, Durchsetzung der Gemeinschaftsmarke in der EU, p.4.

⁹ Herdegen , Internationales Wirtschaftsrecht, p. 195.

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The Convention provides minimum standards that the member states undertake upon accession to implement in their national law. The members have agreed to extend the trade mark protection which they offer to their own citizens to the citizens of other member states. This special principle is recorded in Art. 6 quinquies. It is called telle-quelle principle. ¹⁰ b. Madrid Agreement

Under the Madrid Agreement of 1891 it is possible to create an international trade mark in addition to the telle-quelle protection of the Paris Convention.

The advantage of the Madrid Agreement in comparison to the Paris Convention is the administrative convenience. It is not required to register your trade mark in every country where you want to obtain protection. Just one single application filed in one language to the office of the World Intellectual Property Organization (WIPO) in Geneva is sufficient to receive protection for your trade mark in every member state you want to. The protection will last twenty years and it can be renewed. ¹¹ The disadvantage of the Madrid Agreement is that the number of participating countries has remained low. There are an important number of industrial countries which are not a party of the Madrid Agreement, for example the United States, Japan and the Scandinavian countries. A compromise related to the disadvantage was achieved by the Madrid Protocol. c. Madrid Protocol

The Madrid Protocol was signed on the 27 ^th of June in 1989 by 28 countries.

It offers every state which is a party of the Paris Convention the membership in the same way as it connects the Madrid Agreement with the European Union and the Community Trade Marks through a special provision allowing intergovernmental organisations to become a party to the Madrid Protocol. 12

¹⁰ Kur, Studies in Industrial Property and Copyright Law, p. 93.

¹¹ Eisenmann, Grundriss Gewerblicher Rechtsschutz und Urheberrecht, p. 328.

¹² Holeweg, GRUR Int. 2001, p. 158.

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The Madrid Protocol therefore is a treaty that provides for an international procedure to obtain multi-national trade mark protection and international registration by a way of a centralized system. The advantage of the Madrid Protocol to trade mark owners is that it permits registration in up to 57 countries on a basis of national applications. 13

d. TRIPS - Trade-related aspects of intellectual property rights The three above mentioned legal basis’ s were developed by the World Intellectual Property Organisation (WIPO) outside the TRIPS. The TRIPS Agreement was created in the context with the General Agreements on Tariffs and Trade (GATT). ¹⁴ The aim and the content of TRIPS is the promotion of the international trade. On one hand the TRIPS regulations strengthen the protection of intellectual property rights and on the other hand these regulations secure that arrangements for the protection of intellectual property rights do not hinder and retrain the international trade. ¹⁵ The TRIPS Agreement incorporates the substantive provisions of the Paris Convention and makes them also binding for non member states. Furthermore the TRIPS Agreement contains a number of new and higher protection standards for intellectual property. Although the TRIPS Agreement is incorporated with the Paris Convention there is no relationship between the TRIPS Agreement and the Madrid Agreement. The two agreements exist completely independently. 16

2. Application progress for protection on the basis of the Madrid Agreement and the Madrid Protocol

The Madrid Agreement and the Madrid Protocol have a combined implementing ordinance. Therefore the application progress for a registration with the Madrid Agreement and the Madrid Protocol is the same.

¹³ Kur, Studies in Industrial Property and Copyright Law, p. 94, 95.

¹⁴ Hermes, TRIPS im Gemeinschaftsrecht, p. 27.

¹⁵ Hermes, TRIPS im Gemeinschaftsrecht, p.30.

¹⁶ Kur, Studies in Industrial Property and Copyright Law, p. 96.

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But it should be noted that only the regulations of the Madrid Agreement are used if the applicant for the international registration is a citizen of a member state of the Madrid Agreement and the Madrid Protocol or if the applicant is only a citizen of a member state of the Madrid Agreement. 17

The owner of a nationally registered trademark or the applicant for the international registration have to file a single international application to the World Intellectual Property Organization based on their national application through the Patent and Trade Mark Office of his home country.

International registration requires that the trade mark is already registered nationally. In conclusion the trade mark is not protected by international registration in the original country. International protection does not replace the national registration. Each member country will decide whether to refuse or accept the application. 18

During the first five years the international registration is dependent upon the underlying national registration. If the trade marks national registration is rejected or successfully opposed, the international registration and all of the rights obtained in the member countries will be cancelled accordingly. ¹⁹ In this case the Madrid Protocol offers the former trade mark owners the possibility to apply for a national registration with the old priority of the international trademark. Compared with the Madrid Agreement the Madrid Protocol offers more attractive international trade mark protection to the applicants. ²⁰ 3. Contents of the application

The applicant has to fill in a special form which contents his name, his address, the country of origin, information about the national registration and details about the trade mark. For instance a trade mark with a three dimensional shape has to be designated as a marque plastique.

¹⁷ Berlit, Das neue Markenrecht, p. 192, 193.

¹⁸ Maldonado, http://216.87.176.225/marcos/docs/td_tmar_su_ww_en.html

¹⁹ Berlit, Das neue Markenrecht, p. 192.

²⁰ Berlit, Das neue Markenrecht, p. 193.

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Furthermore the national trade mark office has to confirm that the international application and the national application are corresponding.