Branding Trends From a Lawyer’s Perspective — Trend 2: Thinking Outside the Box
19 October 2020
In this blog series, we highlight prominent branding trends and consider the implications that they may have on the legal protection of a brand. Branding is, of course, a broad concept that encompasses everything from product to promotion and beyond. However, for the purposes of this blog series, we use the terms ‘brand’ and ‘branding’ in a narrower sense — primarily synonymously with ‘visual identity’.
You can find links to the other parts of this blog series at the end of this post.
Trademarks Can Be Much More Than Just Names and Logos
When we think of trademarks, we intuitively think of names and logos. However, trademarks can be much more than just that. For example, under EU law, a trademark may consist of any sign that is capable of distinguishing the goods and services of one undertaking from those of others and that is capable of being represented clearly and precisely on the trademark register. In addition to words (including personal names), the EU trademark regulation mentions designs, letters, numerals, colours, the shape of goods or of the packaging of goods, and sounds as examples of such signs. However, the list is not exhaustive, so other types of non-traditional trademarks can be protected as well.
This is good news for brand owners who, in the increasingly crowded and competitive market, are looking for new ways to stand out. Specific patterns and colours are perhaps some of the more well-established types of non-traditional trademarks out there — just think of Adidas’ three stripes and Tiffany’s signature blue hue. Other types of non-traditional trademarks that we are already used to seeing include 3D shapes (e.g. the Coca-Cola bottle) and so-called position marks (e.g. the red tabs and stitching on the back pockets of Levi’s jeans and the red soles of Louboutin shoes).
Going forward, also other types of non-traditional trademarks may become more prevalent. The reason for the shift is that a few years ago, the EU did away with the requirement that a trademark must be capable of being represented graphically using, for example, letters, numbers, or lines (drawings). Now, trademarks can be represented in any appropriate form using generally available technology, including audio, video, or multimedia files. Thus, it has become easier for brands to protect, among other things, trademarks with sound or motion elements, such as audio or animated logos.
Nevertheless, certain types of non-traditional marks still remain that would be very challenging — if not currently impossible — to protect due to limitations on what contemporary technology can reproduce in digital format. These include scents, tastes, and tactile marks (e.g. the texture of a product material). So, until “smell-o-vision” and similar technologies possibly become generally available, brands will need to rely primarily on trade secret protection or other intellectual property rights to maintain exclusivity in, for example, the signature scents they use to create the right ambiance in their stores.
Three Things to Be Aware of Before Applying for a Non-Traditional Trademark
1. Non-traditional trademarks are generally not inherently distinctive.
Although non-traditional trademarks are becoming more common, trademark offices, such as the European Union Intellectual Property Office, still generally consider that the average consumer is not liable to initially perceive, for example, a colour or a shape as an indication of the commercial origin of certain goods or services. Rather, the average consumer will likely believe at the outset that these merely serve an aesthetic function. Therefore, brands wishing to protect non-traditional trademarks will usually need to be able to prove distinctive character acquired through use.
2. In the case of EU trademarks, it can be very challenging to prove acquired distinctiveness.
In the case of EU trademarks, acquired distinctiveness must be proven throughout the EU. Although the trademark owner does not necessarily need to present evidence separately for each and every Member State, they must show that the evidence presented can also be extrapolated to cover other Member States. The burden of proof is very high, and even many famous brands have failed to fulfil it. For example, evidence covering 11 of the relevant 15 Members States (on the application date), whose population comprised 92 per cent of the entire EU population, was considered insufficient to show that Louis Vuitton’s Damier Ebene Canvas pattern had become distinctive throughout the EU. Consequently, it may often be advisable to apply for national instead of EU trademark registrations for non-traditional trademarks.
3. The scope of protection for non-traditional trademarks is unclear.
There is still relatively little case law regarding the alleged infringement of non-traditional trademarks. Thus, it is unclear how broad the scope of protection for such trademarks is. For example, could Louboutin rely on its red sole trademark to prevent other shoe brands from using pink or burgundy soles on their shoes, or is the scope of protection for the trademark limited to bright red soles? Ultimately, the scope of protection must be determined on a case-by-case basis — as, of course, is the situation with respect to more conventional types of trademarks.