Jump to ContentJump to Main Navigation
The Protection of Non-Traditional TrademarksCritical Perspectives$

Irene Calboli and Martin Senftleben

Print publication date: 2018

Print ISBN-13: 9780198826576

Published to Oxford Scholarship Online: February 2019

DOI: 10.1093/oso/9780198826576.001.0001

Show Summary Details
Page of

PRINTED FROM OXFORD SCHOLARSHIP ONLINE (oxford.universitypressscholarship.com). (c) Copyright Oxford University Press, 2021. All Rights Reserved. An individual user may print out a PDF of a single chapter of a monograph in OSO for personal use. date: 31 July 2021

Non-Traditional Trademarks

Non-Traditional Trademarks

An Empirical Study

Chapter:
(p.37) 2 Non-Traditional Trademarks
Source:
The Protection of Non-Traditional Trademarks
Author(s):

Mitchell Adams

Amanda Scardamaglia

Publisher:
Oxford University Press
DOI:10.1093/oso/9780198826576.003.0003

Abstract and Keywords

This chapter provides a twenty-year retrospective on non-traditional trademarks, using the European Union, the United Kingdom, Singapore, Japan, and Australia as case studies. It presents findings from an empirical study on the application and registration of non-traditional marks in these jurisdictions from 1996 to present day. It assesses whether the appetite for non-traditional marks differs across jurisdictions and what impact, if any, differing regulatory regimes have on filing and registration activity. The study also canvasses the micro-trends emerging from these data in order to test prevailing assumptions about non-traditional marks. The policy implications of these findings will also be touched upon and contextualized against growing concerns about trademark depletion, which have to date focused on the diminishing number of available words and colors as trademarks, but may well extend to non-traditional marks more generally.

Keywords:   trademarks, shapes, colors, non-traditional marks, exotic marks, Europe, United Kingdom, Singapore, Japan, Australia

I. Introduction

This chapter provides a twenty-year retrospective on non-traditional trademarks, using the European Union (EU), the United Kingdom (UK), Singapore, Japan, and Australia as case studies. It presents findings from an empirical study on the application and registration of non-traditional marks in these jurisdictions from 1996 to present day. The aim is to assess, among other things, whether the appetite for non-traditional marks differs across jurisdictions and what impact, if any, differing regulatory regimes have on filing and registration activity. The study further aims to canvass the micro-trends emerging from these data in order to test, at a high level, prevailing assumptions about non-traditional marks. The policy implications of these findings will also be touched upon and contextualized against growing concerns about trademark depletion, which have to date focused on the diminishing number of available words1 and colors2 as trademarks, but may well extend to non-traditional marks more generally.3 This chapter also sets out plans for future research arising from the data presented here.

II. Jurisdictional Differences and Legal Controversies

Today, “almost anything at all that is capable of carrying meaning” can function as a trademark.4 Even so, the limits placed upon registration vary across jurisdictions. When it comes to non-traditional marks, the EU, the UK, Singapore, Japan, and (p.38) Australia make for an interesting comparative study thanks to their geo-political differences and their differing registration requirements for non-traditional marks.

The key point of difference between the case studies presented in this chapter relate to the treatment of functional marks—namely functional shape marks. The registration of non-traditional marks in these jurisdictions also poses the usual series of legal dilemmas, which are frequently relied upon to frame normative arguments for (but mostly against) the registration of non-traditional marks. These jurisdictional differences and policy dilemmas will be discussed in the first part, before the empirical impact of these issues are unpacked in the remainder of the chapter, with a view to test some of the assumptions underlying the scholarly discussion on non-traditional marks.

A. Comparative approaches to functionality and non-traditional marks

In most jurisdictions, or at least those that are signatories to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), non-traditional marks are registrable so long as they are distinctive and visually perceptible. Such signs include but are not limited to “… in particular words including personal names, letters, numerals, figurative elements, and combinations of colours as well as any combination of such signs . …”5 As this illustrative list is not closed, the trademark concept underlying the TRIPS Agreement is broad enough to capture two dimensional and three-dimensional shapes, sounds and scents, as well as movement marks and holograms.

As our study will show (the findings of which will be discussed later in the chapter), the most popular category of registered non-traditional marks is the three-dimensional (3D) shape mark. The law relating to shapes is largely similar in those countries who are signatories to TRIPS—providing some facility for the protection and registration of shapes as trademarks—whether that be elements of trade dress, get-up or product design and configuration. There are however some differences with respect to the assessment of distinctiveness and the treatment of functional shapes, be that utilitarian functionality or aesthetic or ornamental functionality, which will be outlined here.

In the UK for example, and consistent with Article 2 of the former EU Trade Mark Directive 2008/95 (EU Directive 2008),6 a trademark is defined under section 1(1) of the Trade Marks Act 1994 as consisting of

any sign capable of being represented graphically particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided such signs are capable of distinguishing the goods of one undertaking from those of other undertakings.7

(p.39) Thus, the shape of goods or elements of their packaging are all registrable subject matter in the EU and the UK.8

In the UK, the turning point was the introduction of the Trade Marks Act 1994, which dramatically widened what constituted a registrable trademark. In particular, the 1994 Act made way for the possibility of registering several types of signs not previously registrable, including 3D marks. Pursuant to this definition and the principles set out in Koninklike Philips Electronics NV v. Remington Consumer Products Ltd.,9 a sign (including shapes) cannot be precluded from registration because it is prima facie incapable of acting as a badge of origin. Instead, any determination as to registration hinges upon the assessment of distinctiveness, whether that be ab initio or through the use which is made of the sign in trade.

Significantly, the EU Directive, and consequently UK trademark law, does impose some restrictions for signs consisting of shapes that result from the nature of the goods themselves, are necessary to obtain a technical result, or give substantial value to the goods.10 Similar to the American functionality doctrine,11 this prohibition is justified on the basis of “ … the public interest, in ensuring that natural, functional, or ornamental shapes may be freely used by all.”12 More specifically, “[t]he functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm’s reputation, from … inhibiting legitimate competition by allowing a producer to control a useful product feature.”13 In doing so, the doctrine draws a clear line between the province of trademark law and patent law, to guard against the granting of a monopoly over functional features, potentially in perpetuity, without regard to whether such features qualify as patents.14

The EU prohibition on functional marks has been expanded to some extent by a recent amendment laid down in Article 4(1)(e) of the EU Directive which broadened the existing restriction on the registration of “ … signs consisting exclusively of the shape of the goods to other types of signs …” by adding the words “ … or another characteristic.” This amendment places some types of non-traditional marks, which (p.40) could be considered as giving substantial value to the goods (including colors), under threat of being rejected without the possibility of overcoming this objection on the basis of acquired distinctiveness. It is unclear how the Court of Justice of the European Union (CJEU) will interpret the meaning of the term “another characteristic” but it may have an impact on trademarking patterns in the future.

A similar restriction on the registration of functional marks exists under Singaporean trademark law, under section 7(3)(b) of the current Trade Marks Act, which prohibits the registration of shapes necessary to obtain a technical result.15 In Singapore, section 2 of the Trade Marks Act 1998 broadly defines a sign to include “any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape, colour, aspect of packaging or any combination thereof ….”16 In an attempt for greater harmonization, the Trade Marks (Amended) Act 2004 (Singapore) removed the requirement that a mark has to be “visually perceptible” in order to qualify for registration, meaning that marks such as sound and smell marks, which were previously denied registration, can now be registered.17

Section 7(3)(b) of the Trade Marks Act 1998 (Singapore) prohibits the registration of shapes that are necessary to obtain a technical result.18 As in the EU, the purpose of this provision is to prevent a trademark monopoly on technical solutions or functional characteristics. A mark must also be refused under section 7(3)(a) if the shape results from the nature of the goods.19

Japanese trademark legislation was amended in 1996 to include shapes of goods and packaging as registrable subject matter.20 There are some restrictions to registration. Under this Act, trademarks which consist solely of a mark indicating in a common manner, the shape (including the shape of packages) are to be refused.21 It was only in more recent times, with changes to the Trademark Act, that Japan allowed for the registration of all types of non-traditional marks.22 Japan therefore, is an interesting element to this case study as a new entrant to the non-traditional mark market. Prior to these abovementioned changes, a trademark was defined as “ … any character, figure, sign, or three-dimensional shape, or any combination thereof, or any combination thereof with colors.”23 While this definition allowed for the registration of shapes, colors and sound marks were not registrable. Moreover, it was difficult to register motion marks, hologram marks, and position marks. This peculiarity is reflected in the data presented in the remaining parts of this chapter.

The final jurisdiction presented in this case study is Australia. In Australia, shapes including 3D marks are registrable pursuant to the expansive definition of a sign contained in the prevailing Trade Marks Act 1995, which includes “ … any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.”24 The Trade Marks Act 1995, which replaced the 1955 Act, not only made explicit provision for the registration of colors, (p.41) sounds, and scents for the first time in Australia, but also expanded registrable subject matter to expressly include aspects of packaging and shapes.25

In Australia, there is no functionality doctrine to preclude the registration of functional shapes. Nor is there any explicit legislative provision or ground for refusal relating to functional shape marks, although such a limitation was included in the Trade Marks Act 1994, an Act which never came into operation.26 This represents a significant point of departure between Australian trademark law and the other jurisdictions considered in this study.

In the absence of an express statutory prohibition, there does appear to be a judicial reluctance to permit the registration of shapes where doing so would mean that “… the proprietor of the mark will be in a better position than a patentee or the proprietor of a registered design, each of whom has a protection limited to the span of a relatively short time.”27 Even so, the judicial statements made on the issue are purely obiter,28 and as the issue of functionality is subsumed into discussions of distinctiveness under Australian trademark legislation, it is still possible that functional shapes could be registrable if they in fact become distinctive of one trader’s goods through use.29 This peculiarity stems from the operation of section 41 and the standard of distinctiveness under Australian trademark law. This may explain why the three-dimensional shape of Nestlé’s break-away Kit-Kat chocolate wafer bar is registered as a trademark in Australia30 but was refused registration in the EU.31

B. Other policy concerns

In addition to the concerns around functionality, non-traditional marks raise a number of other policy concerns, which may, in theory, limit the ability to apply and register such marks. The requirement of graphical representation is one such issue. This is particularly an issue for sound and scent marks. It was always thought that the requirement of graphical representation would limit the kinds of non-traditional marks that were registrable. Trademark offices have sought to deal with this by providing specific guidelines for the representations of various types of marks.32 In Australia for example, there is no specific stipulation around sound (p.42) marks, but it is recommended that such marks be represented by musical notation.33 For scent, taste, and texture marks, a precise and accurate description is sufficient. The position is much the same in the EU, although the abovementioned amendment to the EU Directive in 2015 has relaxed the requirements around graphical representation to the extent that authorities and the public are able “… to determine the clear and precise subject matter of the protection afforded to its proprietor.”34

Another policy issue that has attracted the attention of scholars and the judiciary concerns color marks as non-traditional marks. Opponents have argued that the registration of single colors would result in “color depletion” which would in time, limit traders’ choices when it came to packaging and advertising.35 This concern was observed in the key Australian authority on color marks—Philmac Pty Ltd v. The Registrar of Trade Marks (Philmac), where Mansfield J. noted that while “[i]n a scientific context, the range of colors available to traders for application to goods is in fact infinite … in the context of trade mark law that is not the case.”36 Similarly, in the United States (U.S.), the District Court for the Southern District of Iowa ruled that the color green was aesthetically functional for tractors and, therefore, no protection should be granted to such a color trademark unless the acquisition of secondary meaning is proven.37

Aside from color depletion concerns, there has also been judicial skepticism as to whether a single color could even be inherently distinctive. Such skepticism was expressed by the Registrar in Philmac38 and confirmed by others including Lehane J at first instance in Koninklijke Philips Electronics NV v. Remington Products Australia Pty Ltd., who remarked that “[i]t is not easy to imagine circumstances in which a (p.43) sign which is simply a color … will be capable of registration, or of use, as a trade mark.’39 In jurisdictions where the functionality doctrine operates, concerns about color depletion and color scarcity can be dealt with in that way. We have seen this in the U.S., where the Federal Circuit barred the use of black as a trademark on outboard boat motors because black has special functional attributes in decreasing the apparent size of the motor.40

III. Methodology

The last decade has seen the emergence of a wide range of easy access intellectual property application information services. Services have ranged from making bulk application data publicly available for the purposes of statistical research,41 to offering search tools covering application data from multiple intellectual property offices in one online database.42 Among the datasets and databases available is trademark application data.43 With the introduction of non-traditional marks, national intellectual property offices have started tagging their trademark application data to indicate the nature of the sign for ease of searching.44 This has enabled the collation of non-traditional trademark application data. For this study, data on non-traditional trademark applications were sourced from the trademark offices of the EU, the UK, Singapore, Japan, and Australia.45 It is important to emphasize that the data contained in this study have been compiled from national offices into a single snapshot to make it easier for statistical analysis.46 The data collected are unique as (p.44) they contain detailed information about aspects of individual non-traditional trademark applications.

The dataset contains 22,321 observations with filing dates from January 1, 1996 to December 31, 2016.

The EU trademark data were collected from the EU Intellectual Property Office (EUIPO) online database.47 Bibliographic data for non-traditional trademarks held by the UK Intellectual Property Office (UKIPO) database with a filing date earlier than December 31, 2016 were collected from their 2016 data release.48 The Singaporean and Japanese non-traditional trademark application data were collected from the national intellectual property office online databases.49 The Australian data were drawn from IP Australia’s Intellectual Property Government Open Database (IPGOD).50 IPGOD includes over 100 years of data on all intellectual property rights administered by IP Australia.51

As such, this study is substantially more detailed and expansive than any existing study into the registration of non-traditional marks, which provides information to discern more longitudinal trends, including possible extensions to registration after the expiration of the initial ten-year term of protection. Therefore, this dataset is uniquely placed to examine twenty years of applications for shape, color, sound, scent, motion, position, hologram, gesture, and texture trademarks. The trademark activities for these non-traditional signs were examined individually before looking at any applications containing combinations of non-traditional signs. Particular attention was given to the longitudinal filing rates, the proportion of marks currently registered, the number of classes claimed over this period and the types of classes claimed for the different types of marks. Registrations were also examined to reveal the rate of renewals for all categories of non-traditional marks.

IV. Overview of Application Data

Figure 2.1 shows the general trends in the number of non-traditional trademark registration applications filed at the EUIPO, the UKIPO, the Intellectual Property Office of Singapore (IPOS), the Japanese Patent Office (JPO), and IP Australia, per year from 1996 to 2016.

(p.45) Over this twenty-year period, there has been a total 22,321 applications made in relation to the registration of non-traditional marks—that is, marks that have been classified as shape, color, sound, scent, hologram, movement, position, or gesture marks (or combinations of these kinds of marks).52 As expected, the largest number of applications for Australia and the UK appear in 1996. For Australia, this was the first year during which the 1995 Act came into effect. The dramatic spike in total applications in 2015 corresponds with Japan legislating to accept non-traditional trademarks.

Previous to 2015, applications received by the JPO were predominantly 3D shape marks, indicating a general acceptance that shapes could function as a trademark. As Figure 2.1 shows, the trend in annual trademark applications remains steady for the UK, Singapore, Japan, and Australia. Conversely, the number of applications received by the EUIPO has slowly increased over the period. The peak in applications in 2000 and drop in 2001 interestingly corresponds with the Internet bubble.53

Table 2.1 reports the leading categories of non-traditional marks applied for at the five intellectual property offices. Over this twenty-year period, the overwhelming majority of applications has been for 3D shapes. The overall proportion of non-traditional marks currently registered for all applications filed from 1996 to 2016, (p.46) (p.47) was 0.50. However, this was not reflected in individual categories of non-traditional marks. In general, movement marks receive positive treatment in each jurisdiction. The other categories do not fare as well. This may be due to increased scrutiny during examination.

Table 2.2 sets out the number of claimed classes of goods and services for which the application sought to register the non-traditional marks from each jurisdiction between 1996 and 2016. The forty-five classes of goods and services are taken from the international classification of goods and services or the Nice Classification.54

Non-Traditional TrademarksAn Empirical Study

Figure 2.1 Trends in the number of non-traditional trademark registration applications filed 1996–2016

Table 2.1 Application and Registration by Mark Type and Filing Basis 1996–2016

Filing Country

Mark Type

Number of Applications

% of Total NTM Applications

Proportion Registered

AU

3D Shape

2,761

65.30

0.32

Color

928

21.95

0.22

Color-Shape

306

7.24

0.32

Sound

106

2.51

0.52

Position

58

1.37

0.45

Movement

41

0.97

0.90

Scent

19

0.45

0.05

Hologram

8

0.19

0.50

Gesture

1

0.02

0.00

Subtotal

4,228

100.00

0.31

EU

3D Shape

9,042

81.89

0.56

Color

1,210

10.96

0.41

Position

381

3.45

0.32

Sound

260

2.35

0.78

Movement

123

1.11

0.56

Hologram

10

0.09

0.30

Scent

9

0.08

0.00

Texture

4

0.04

0.00

Font

2

0.02

0.00

Subtotal

11,041

100.00

0.54

JP

3D Shape

2,428

64.13

0.88

Sound

458

12.10

0.18

Color

448

11.83

0.00

Position

321

8.48

0.05

Motion

116

3.06

0.43

Hologram

15

0.40

0.53

Subtotal

3,786

100.00

0.61

SG

3D Shape

1,100

64.63

0.39

Colors

309

18.16

0.12

Aspect of Packaging

193

11.34

0.34

Sound

49

2.88

0.69

3D Shape/Aspect of Packaging

30

1.76

0.33

Movement

13

0.76

0.69

Hologram

8

0.47

0.50

Subtotal

1,702

100.00

0.34

UK

3D Shape

1,337

85.49

0.65

Color

149

9.53

0.70

Sound

30

1.92

0.57

Hologram

25

1.60

0.60

Movement

18

1.15

0.39

Position

3

0.19

0.33

Texture

2

0.13

0.00

Subtotal

1,564

100.00

0.65

Total Applications

22,321

100.00

0.50

Table 2.2 Applications by International Class, 1996–2016

International Class

AU

EU

JP

SG

UK

Number of Apps.

% of Total

Number of Apps.

% of Total

Number of Apps.

% of Total

Number of Apps.

% of Total

Number of Apps.

% of Total

1

Chemicals

74

1.14

291

1.24

47

0.72

19

0.90

16

0.57

2

Paints

29

0.45

118

0.50

19

0.29

16

0.76

3

0.11

3

Cosmetics and Cleaning Preparations

435

6.69

1,398

5.95

324

4.94

195

9.22

217

7.70

4

Lubricants and Fuels

62

0.95

270

1.15

49

0.75

20

0.95

35

1.24

5

Pharmaceuticals

295

4.54

780

3.32

331

5.05

110

5.20

119

4.22

6

Metal Goods

196

3.02

512

2.18

95

1.45

30

1.42

42

1.49

7

Machinery

195

3.00

564

2.40

155

2.36

44

2.08

95

3.37

8

Hand Tools

63

0.97

257

1.09

38

0.58

12

0.57

13

0.46

9

Electrical and Scientific Apparatus

413

6.35

1362

5.80

465

7.09

125

5.91

149

5.29

10

Medical Apparatus

146

2.25

361

1.54

109

1.66

17

0.80

36

1.28

11

Environmental Control Apparatus

168

2.58

526

2.24

101

1.54

31

1.47

52

1.84

12

Vehicles

129

1.98

433

1.84

95

1.45

20

0.95

55

1.95

13

Firearms

0

0.00

21

0.09

1

0.02

2

0.09

0

0.00

14

Jewellery

114

1.75

367

1.56

159

2.42

65

3.07

59

2.09

15

Musical Instruments

36

0.55

85

0.36

16

0.24

8

0.38

8

0.28

16

Paper Goods

242

3.72

1,039

4.43

279

4.25

91

4.30

112

3.97

17

Rubber Goods

78

1.20

230

0.98

27

0.41

12

0.57

18

0.64

18

Leather Goods

110

1.69

425

1.81

130

1.98

48

2.27

40

1.42

19

Non-Metallic Building Materials

78

1.20

234

1.00

65

0.99

15

0.71

23

0.82

20

Furniture

170

2.62

632

2.69

146

2.23

35

1.65

39

1.38

21

Housewares and Glass

243

3.74

889

3.79

178

2.71

54

2.55

108

3.83

22

Cordage and Fibres

8

0.12

55

0.23

15

0.23

3

0.14

1

0.04

23

Yarns and Threads

1

0.02

9

0.04

3

0.05

2

0.09

1

0.04

24

Fabrics

50

0.77

152

0.65

47

0.72

12

0.57

19

0.67

25

Clothing

280

4.31

789

3.36

208

3.17

62

2.93

102

3.62

26

Fancy Goods

24

0.37

69

0.29

47

0.72

8

0.38

10

0.35

27

Floor Coverings

4

0.06

53

0.23

9

0.14

4

0.19

5

0.18

28

Toys and Sporting Goods

213

3.28

733

3.12

337

5.14

62

2.93

92

3.26

29

Meats and Processed Foods

162

2.49

1,135

4.83

250

3.81

75

3.55

102

3.62

30

Staple Foodstuffs

427

6.57

1,652

7.04

451

6.88

166

7.85

177

6.28

31

Natural Agricultural Products

94

1.45

238

1.01

70

1.07

19

0.90

10

0.35

32

Beers and other Non-Alcoholic Beverages

325

5.00

1,278

5.44

190

2.90

103

4.87

164

5.82

33

Alcoholic Beverages (except beers)

480

7.38

1,660

7.07

337

5.14

179

8.46

259

9.19

34

Smokers’ Articles

56

0.86

187

0.80

29

0.44

55

2.60

30

1.06

35

Advertising and Business

313

4.82

1,208

5.15

392

5.98

92

4.35

131

4.65

36

Insurance and Financial

106

1.63

320

1.36

211

3.22

30

1.42

84

2.98

37

Building Construction and Repair

109

1.68

418

1.78

196

2.99

32

1.51

58

2.06

38

Telecommunications

64

0.98

342

1.46

79

1.20

28

1.32

39

1.38

39

Transport and Storage

86

1.32

451

1.92

120

1.83

17

0.80

52

1.84

40

Treatment of Materials

18

0.28

138

0.59

53

0.81

8

0.38

6

0.21

41

Education and Entertainment

152

2.34

572

2.44

256

3.90

79

3.74

83

2.94

42

Computer and Scientific

150

2.31

648

2.76

178

2.71

47

2.22

70

2.48

43

Hotels and Restaurants

50

0.77

338

1.44

112

1.71

43

2.03

49

1.74

44

Medical, Beauty, and Agricultural

36

0.55

134

0.57

64

0.98

15

0.71

13

0.46

45

Personal and Legal

16

0.25

106

0.45

74

1.13

5

0.24

23

0.82

Total

6,500

100.00

23,479

100.00

6,557

100.00

2,115

100.00

2,819

100.00

V. Focus on National (and Regional) Applications

The following sections will deal with non-traditional trademark applications filed in each jurisdiction.

A. European Union

The EUIPO received the highest number of applications for non-traditional marks, totalling 11,041 applications. Of these, 803 were Madrid Protocol applications. The majority of these marks fall into the shape category (9,042) followed by color trademarks (1,210). The EUIPO received 381 position mark applications, 260 sound applications, 123 movement applications, 10 holograms, nine scents, and four texture mark applications. Two applications contained type fonts. Of the total number of applications for non-traditional marks, 62.2% were initially accepted for (p.48) registration and currently 53.6% are registered as trademarks, while 3,743 (33.9%) were never registered after lapsing during examination. There are 429 applications (3.9%) currently pending. Around 63% of the applications registered from 1997 were renewed.

The EUIPO enjoyed the highest average number of filings over the period, with an average of 525.8 applications received per year. Figure 2.2 shows the peaks and increased growth in applications over the period along with a similar trend in the number of classes claimed per year. Interestingly the dip in 2001 correlates to the dot-com bust. The average annual growth rate over the period was 3.55%, the highest across the case study jurisdictions. More importantly, the number of classes claimed is increasing faster than the number of applications, with an average of 2.13 classes claimed per application over this period.

The most popular class claimed was 33 (alcoholic beverages, except beers), followed by 30 (including coffee, tea, cocoa, and confectionary), 3 (including soaps, perfumery, cosmetics), 9 (including computers), and 32 (including beers, mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices). The most popular classes of services for which non-traditional mark applications were made included: 35 (including advertising), 42 (including scientific and technological services and research and design related thereto), 41 (including education), 39 (including transport), and 37 (including building and construction).

Non-Traditional TrademarksAn Empirical Study

Figure 2.2 Trends in EUIPO applications 1996–2016

B. United Kingdom

The data from the last twenty years show that in total 1,564 applications were made to the UKIPO in relation to the registration of non-traditional marks.55 Over the twenty-year period there were a total of 321 Madrid Protocol applications. Again, the majority of these marks fall into the shape category (1,337) followed by color trademarks (149). There were only thirty sound applications, twenty-five hologram applications, eighteen movement applications, three position applications, and two texture applications recorded. Of the total number of applications for non-traditional marks, 85.3% were initially accepted for registration and currently 65.2% are registered as trademarks, while 142 (9.1%) were never registered after being refused or withdrawn. Thirty-three (2.1%) are currently pending. Around 67% of the applications registered from 1996 were renewed.

The UKIPO received on average 74.5 applications per year, the lowest average compared to the other jurisdictions. Figure 2.3 shows interest peaked between 1996 to 1998 and slumped between 2001 to 2012. Interest picked up again between 2013 and 2015. The average annual growth rate over the period was 0.32%. The number of classes claimed did not necessarily match the number of filings. Interestingly the number of classes claimed during 2001 to 2012 peaked in 2005 and again in 2010. (p.49) (p.50) (p.51) (p.52) (p.53) Overall, the average number of classes claimed was 1.80 per application. This was higher than the rate seen in Australia and discussed below.

Applications for non-traditional marks in the UK followed the general trend with the most popular claimed class of goods being international class thirty-three (alcoholic beverages, except beers) taking nearly 10% of total number of classes claimed in that the period. This was followed by classes 3 (including soaps, perfumery, cosmetics), 30 (including coffee, tea, cocoa, and confectionary), 32 (including beers, mineral and aerated waters, and other non-alcoholic beverages; fruit beverages and fruit juices), and 9 (including computers). The most popular classes of services for which non-traditional mark applications were made included: 35 (including advertising), 36 (insurance and financial services), 41 (including entertainment and education services), and 42 (including scientific and technological services and research and design related thereto).

Non-Traditional TrademarksAn Empirical Study

Figure 2.3 Trends in UKIPO applications 1996–2016

C. Singapore

The data show Singapore was slow off the mark in terms of its non-traditional trademark applications. Between 1996 and 2016, 1,702 applications were made to the IPOS in relation to the registration of non-traditional marks with an average of 81.0 applications made per year. Three-dimensional shape marks dominate with 1,100 applications followed by color trademarks with 309 applications. Aspects of packaging is specifically tagged by the IPOS and indicated that 193 applications were made along with thirty applications for a combination of color and aspect of packaging. The remainder was made up of forty-nine sound applications, thirteen movement applications, and eight hologram applications recorded. Of the total number of applications for non-traditional marks, currently, 34.3% are registered as trademarks, the lowest seen in all five jurisdictions examined. One hundred and twenty-six applications (7.4%) are currently pending.

Figure 2.4 shows the peaks and troughs of total applications over the twenty-year period along with the number of Nice Classification classes claimed per year. As seen in the EU, the interest in non-traditional marks in Singapore peaked in 2000 and slumped in 2002, corresponding to the dot-com boom and bust. Overall the average annual growth rate over the period was 2.86%. The number of classes claimed closely follow the number of applications with an average of 1.24 classes claimed per application.

The most popular claimed classes of goods for which non-traditional mark applications were made included: class 3 (including soaps, perfumery, cosmetics), 33 (alcoholic beverages, except beers), 30 (including coffee, tea, cocoa, and confectionary), 9 (including computers), and 5 (including pharmaceuticals). The most popular classes of services for which non-traditional mark applications were made included: 35 (including advertising), 41 (including entertainment and educational services), 42 (including scientific and technological services and research and design related thereto), and 43 (hotel and restaurant services). (p.54)

Non-Traditional TrademarksAn Empirical Study

Figure 2.4 Trends in IPOS applications 1996–2016

D. Japan

Over the last twenty years, Japan displayed a healthy filing rate, despite the early legislative limitations. From 1996 to 2014, the JPO received 1,965 shape mark applications. Figure 2.5 below illustrates the continued interest with an average of 109.2 applications received per year from 1996 to 2014. Over the entire period, 3,786 applications in total have been made to the JPO in relation to the registration of non-traditional marks, with 342 being Madrid Protocol applications. Again, the majority of these marks falls into the shape category (2,428) followed by sound (458) and color (448) marks. The JPO received 321 position mark applications, 116 motion applications, and fifteen hologram applications. The spike in 2015 shown in Figure 2.5 was primarily driven by the interest in color and sound marks. Of the total number of applications for non-traditional marks, all marks appear to have been accepted for registration and currently 60.7% are registered as trademarks, while two international applications for shape marks were never registered after being withdrawn. Only one application was cancelled from the register (being a 3D shape mark). There are currently 1423 applications (37.6%) pending. Most of the shape applications registered before 2005 were renewed by the applicants. Figure 2.5 also shows the number of Nice Classification classes claimed per year. The number of classes claimed in Japan closely follow the other jurisdictions with an average of 1.73 classes claimed per application.

Unlike the other jurisdictions, the most popular claimed classes of goods were class 9 (including computers) making up 6% of total classes claimed, followed by 30 (including coffee, tea, cocoa, and confectionary), class 33 (alcoholic beverages, except (p.55) beers), 28 (toys and sporting equipment), and 5 (including pharmaceuticals). The most popular classes of services for which non-traditional mark applications were made included: 35 (including advertising) making up 6% of total classes claimed, 41 (including education), 36 (including insurance and financial services), 37 (including building and construction), and 42 (including scientific and technological).

Non-Traditional TrademarksAn Empirical Study

Figure 2.5 Trends in JPO applications 1996–2016

E. Australia

The data from the last twenty years show that in total, 4,228 applications were made to IP Australia for the registration of non-traditional marks.56 Over the twenty-year period, a total of 870 Madrid Protocol applications were made.57 By far, the majority of these marks fall into the shape category (2,761) followed by color trademarks (928). There were only 106 sound applications, fifty-eight position applications, forty-one movement applications, nineteen scent applications, eight hologram applications, and one gesture application recorded. There were 306 applications recorded as combination shape and color marks.58 Of the total number of applications (p.56) for non-traditional marks, 36.5% were initially accepted for registration. Currently, 30.6% of those applications are registered as trademarks, while 2,439 (57.7%) were never registered after lapsing during examination or were withdrawn. There were 281 applications (6.7%) refused or removed from the register; 214 applications (5.1%) are currently pending. Around 69% of the applications registered in the initial ten-year period (from the introduction of the Act) were renewed.

Figure 2.6 below shows the trend of total applications over the twenty-year period along with the number of Nice Classification classes claimed per year. As expected, the highest number of applications were received in 1996, the first year during which the 1995 Act came into effect. There are various dips including in 2001 and 2009 (which most likely correlates to the global financial crisis). The average annual growth rate over the period was -0.4%. As trademark applications can request more than one Nice Classification class, there are typically more filings in trademark classes than the number of trademarks filed. The number of classes claimed in Australia closely follow the number of applications with an average of 1.54 classes claimed per application.

The most popular claimed classes of goods for which non-traditional mark applications were made included: class 33 (alcoholic beverages, except beers), 3 (including soaps, perfumery, cosmetics), 30 (including coffee, tea, cocoa, and confectionary), 9 (including computers), and 32 (including beers, mineral and aerated waters, and other non-alcoholic beverages; fruit beverages and fruit juices). The most popular classes of services for which non-traditional mark applications were made included: 35 (including advertising), 41 (including education), 42 (including scientific and technological services and research and design related (p.57) thereto), 37 (including building and construction), and 36 (including insurance and finance services).

Non-Traditional TrademarksAn Empirical Study

Figure 2.6 Trends in IP Australia applications 1996–2016

VI. Conclusion

This chapter has presented the findings from the first comprehensive, longitudinal study of non-traditional marks across the EU, the UK, Singapore, Japan, and Australia. It has traced the filing activity in these jurisdictions over the last twenty years, including the number of applications and registrations across the various categories of non-traditional marks, as well as the classes of goods and services for which they have been applied and registered.

The data show that non-traditional trademarking activity was greatest in the EU, while Australia experienced negative growth over the period considered. Japan has enthusiastically embraced non-traditional marks, since the legal requirements for registration were relaxed to allow for the registration of all types of non-traditional marks, beyond shape marks. Singapore had the lowest filing rate.

Shape marks were by far the most popular category of non-traditional marks, followed by color marks, but combination shape and color marks also make up a significant proportion of the dataset. The last few years have also given rise to a growing number of movement marks, gesture marks, and holograms. The data also showed significant growth in position marks, especially in Japan. Almost as many position marks were registered in Japan as in the EU, where position marks were the third most popular category of registered non-traditional marks. The data would indicate that we are not running out of non-traditional marks. Rather, firms are shifting their attention to different forms of non-traditional marks, beyond the first wave of non-traditional marks of shapes and colors.

Furthermore, this data appears to dispel some of the concerns around non-traditional trademarks. As already noted, most applications relate to shapes. As such, many of the concerns around scent and sound marks and the requirement of graphical representation, have not arisen because those types of applications are so few in comparison to the other categories of non-traditional marks.

Moreover, concerns about color depletion also seem to be overstated. Many of the color marks registered were actually combination marks, and in Japan, more sound marks were registered than color marks. This might indicate that the functionality doctrine (and the doctrine of distinctiveness in Australia) may have had a cooling effect on the demand for these kinds of marks.

This data also presents several opportunities for future research. The first point of research concerns Article 4(1)(e) of the EU Directive and the broadening of the traditional functionality doctrine relating to the registration of “… signs consisting exclusively of the shape of the goods …” to other types of signs by adding the words “… or another characteristic.” There is speculation about whether this amendment will limit the types of non-traditional marks capable of registration. The dataset collated for this study provides the perfect base point to make this assessment, to test the impact of this change to the Directive.

(p.58) This study also provides a perfect base from which to examine whether the amendment to the EU Directive in 2015, which has relaxed the requirements around graphical representation, may in fact change registration practices in the EU. Again, this dataset provides a base point for future research to test the impact of this change. Finally, this data provides fertile ground for further research into the experience of Madrid System applications in national offices—and whether they are treated differently in different jurisdictions.

Notes:

(1) See Barton Beebe & Jeanne Fromer, Are We Running out of Trademarks? An Empirical Study of Trademark Depletion, 131(4) HARV. L. REV. 945 (2018).

(2) Jani L. McCutcheon, How Many Colours in the Rainbow? The Registration of Colour per se under Australian Trade Mark Law, 26(1) EUR. INTELL PROP. REV. 27 (2006).

(3) See Beebe & Fromer, supra note 1.

(4) Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162 (1995).

(5) Agreement on Trade-Related Aspects of Intellectual Property Rights art. 15.1, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299, 33 I.L.M. 1997 (1994).

(6) Council Directive 2008/95 art. 2., 2008 O.J. L299/2 (EC).

(7) Trade Marks Act, 1994, c. 26 (Eng.).

(8) At EU level, this has been confirmed in art. 3 of the current EU Directive 2015/2436 which also refers explicitly to shape marks.

(9) Case C-299/99, Koninklike Philips Electronics NV v. Remington Consumer Products Ltd., 2 C.M.L.R. 52, 39–40 (2002).

(10) This limitation was already introduced into the original text of art. 3(1)(e) of the First Council Directive 89/104/EEC of December 21, 1988 to approximate the laws of the Member States relating to trade marks, [1989] O.J. L040/1 (EC). The provisions stated that “(1)The following shall not be registered or, if registered, shall be liable to be declared invalid: … (e) signs which consist exclusively of (i) the shape which results from the nature of the goods themselves; (ii) the shape of a good which is necessary to obtain a technical result; (iii) the shape which gives substantial value to the goods”; the provision was confirmed, with the same language and numbering, in the text of the European Parliament and Council Directive 2008/95, [2008] O.J. L299/25 (EC), which replaced Directive 89/104. Lastly, in 2015, art. 4(1)(e) of Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015 to approximate the laws of the Member States relating to trade marks, [2015] O.J. L336/1 (EU) [hereinafter 2015 EU Trademark Directive], expanded the provision and added the language “or another characteristic” in addition to the “shape of the good.”

(11) Qualitex, supra note 4, 164–65.

(12) Arnaud Folliard-Mongurial, Distinctive Character Acquired Through Use: The Law and The Case Law, in TRADE MARK USE 409 (Jeremy Phillips & Ilanah Simon eds., 2005).

(13) Qualitex, supra note 4, 164–65.

(14) Id.

(15) Trade Marks Act 1998, c. 332, § 7(3)(b) (Sing.).   

(16) See id. § 2.

(17) Trade Marks Act 1998, c. 332, (Sing.) (amended 2004).   

(18) See id. § 7(3)(b).

(19) See id. § 7(3)(a).

(20) Shōhyō-hō [Trademark Act], 127 of 1959, 2(1) (Japan).

(21) Id. art. 3(1)(iii).

(22) Id. art. 2.

(23) Id. art. 2(1).

(24) See Trade Marks Act 1995 (Cth) § 6 (Austl.).

(25) Id.

(26) See Trade Marks Act 1994 (Cth) § 39 (Austl.) (now repealed). The Trade Marks Act 1994 (Australia) was hastily enacted by Parliament to meet a deadline imposed under international law, but it was never commenced and was eventually replaced by the Trade Marks Act 1995 (Cth) (Austl.).

(27) Philips v. Remington, 100 F.C.R. 90, 1 (2002) (Austl.).

(28) See also obiter statements in Kenman Kandy Australia Pty Ltd. v. Registrar of Trade Marks, 122 F.C.R. 494 (2002) (Austl.) (where Burchett J. observed that “[t]he concerns expressed in both Philips v. Remington (Aust.) and Philips v. Remington (U.K.) about the prospect of trade marks creating monopolies related only to the registration of trade marks that would restrict access to functional features or innovations, and for this reason were well founded.”). Philips, supra note 27; Philips v. Remington, R.P.C. 809 (1999) (UK).

(29) See Trade Marks Act 1995 (Cth) § 41 (Austl.).

(30) See Australian Trade Mark Application 849096 as registered with respect to class 30 to Société des Produits Nestlé SA, https://search.ipaustralia.gov.au/trademarks/search/view/849096.

(31) See recent Judgment in Joined Cases C-84/17 P Société des produits Nestlé SA v. Mondelez UK Holdings & Services Ltd, formerly Cadbury Holdings Ltd, and EUIPO, C-85/17 P Mondelez UK Holdings & Services Ltd, formerly Cadbury Holdings Ltd v. EUIPO, and C-95/17 P EUIPO v. Mondelez UK Holdings & Services Ltd, formerly Cadbury Holdings Ltd. Also see Société des Produits Nestlé v. Cadbury UK Ltd, [2017] EWCA Civ 358; [2017] E.T.M.R. 31.

(32) See generally Trade Marks Office Manual of Practice and Procedure, Pt. 21 (Austl.).

(33) Id. Pt. 10.3.3.3.

(34) 2015 EU Trademark Directive, supra note 10, art. 4.

(35) The color depletion argument was rejected by the U.S. Supreme Court in Qualitex, supra note 4, at 162 (1995) and the U.S. Court of Appeal for the Federal Circuit in re Owens-Corning Fiberglass Corp., 774 F.2d 1116 (Fed. Cir. 1985). In Australia, scholars have also argued substantively against the color depletion theory. See McCutcheon, supra note 2, at 27.

(36) Philmac Pty Ltd. v. The Registrar of Trade Marks, F.C.A. 1551, 58–60 (2002) (Austl.). Mansfield J. went on to say:

In the present application, the consequence of a grant of registration would be to prevent any other trader in goods of the same description from using not only that shade of terracotta specifically described and visually represented in the application in respect of the goods to which the application relates, but all other shades of colour that might be described as deceptively similar to that colour … That is … the limited palate of colours available to a trader at the very least renders it more likely that other persons trading in goods of the relevant kind and being actuated only by proper motives—in the exercise, that is to say, of the common right of the public to make honest use of the colours forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of a colour and want to use it in connection with similar goods in a manner which would infringe a registered trade mark granted in respect of it. Stating the proposition in that way equates it with what has become known in international jurisprudence as the “colour depletion argument.

Id. at 60.

(37) Deere & Co. v. Farmhand, Inc., 560 F. Supp. 85, 217 USPQ 252 (S.D. Iowa 1982). More recently, see Deere & Co. v. FIMCO Inc., No. 15-CV-105 (W.D. Ky. Mar. 8, 2017).

(38) See Philmac, supra note 36.

(39) Koninklijke Philips Electronics NV v. Remington Products Australia Pty Ltd., (1999) 44 I.P.R. 551 per Lehane J at [46]. Similarly, see Kenman Kandy Australia Pty Ltd. v. Registrar of Trade Marks, [2002] 56 I.P.R. 30, 110 (Austl.).

(40) Brunswick Corp. v. British Seagull Ltd. and Outboard Marine Corp., 35 F.3d 1527 (Fed. Cir. 1994).

(41) For example, the United States Patent and Trade Mark Office (USPTO) teams with Google to Provide Bulk Patent and Trademark Data to the Public (June 2, 2010), https://www.uspto.gov/about-us/news-updates/uspto-teams-google-provide-bulk-patent-and-trademark-data-public; Similarly IP Australia also provides open data to the public. See, IP AUSTRALIA, IP GOVERNMENT OPEN DATA, https://www.ipaustralia.gov.au/about-us/economics-ip/ip-government-open-data.

(42) See EUROPEAN UNION INTELLECTUAL PROPERTY OFFICE, TMVIEW, https://www.tmdn.org/tmview/ and WIPO, Global Brand Database, http://www.wipo.int/branddb/.

(43) Id.

(44) Applications are typically tagged as either a specific category of non-traditional trademark (i.e., 3-D shape, color, scent, or sound). Some applications were allocated a category of non-traditional mark at offices such as the European Union Intellectual Property Office (EUIPO) and UK IP Office (UKIPO), which have categorized the marks as “other.” Each trademark application was examined based on its graphical representation and supplementary description or endorsement text to categorize the type of sign. For the sake of consistency with national registers, some categories were left unaltered. As the largest category of non-traditional mark, all 3D shape marks were renamed to “3D Shape marks” for ease of reference in the study.

(45) These jurisdictions were selected by the authors based on geographical spread and access to non-traditional trademark applications.

(46) Either sourced from aggregated trademark database sources such as TMview, national online trademark registers, or contained in released national bulk datasets.

(47) Via TMview. The TMview database contains information from the European Intellectual Property Office (EUIPO) on trademark applications and registered marks. EUIPO, TMview, https://www.tmdn.org/tmview/.

(48) Last updated on Nov. 2, 2016.

(49) Intellectual Property Office of Singapore, IP2SG, https://www.ip2.sg/RPS/WP/CM/SearchSimpleP.aspx?SearchCategory=TM; Japan Patent Office, Japan Platform for Patent Information (J-PlatPat), https://www3.j-platpat.inpit.go.jp/cgi-bin/ET/TM_AREA_E.cgi?1499986729480.

(50) IP AUSTRALIA, INTELLECTUAL PROPERTY GOVERNMENT OPEN DATA 2016, https://data.gov.au/organization/ip-australia. The data presented are current as at Feb. 12, 2016.

(51) Bradley Man, Overview of the Intellectual Property Government Open Data (Economic Research Paper No. 02, IP Australia, 2014), 6 https://www.ipaustralia.gov.au/sites/g/files/net856/f/reports_publications/ip_government_open_data_paper_-_final.pdf.

(52) There were some applications for non-traditional marks made in the years immediately preceding the change in legislation. For example, in Australia in 1995, seventeen applications for non-traditional marks were made, and a further nine applications were made between 1991 and 1994.

(53) Roger Lowenstein, ORIGINS OF THE CRASH: THE GREAT BUBBLE AND ITS UNDOING 101–26 (2004).

(54) Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (as amended on Sept. 28, 1979); Nice Classification (2017) (revised). For details see http://www.wipo.int/classifications/nice/en/index.html.

(55) There were some applications for non-traditional marks made in the years immediately preceding 1996. For example, the data examined for this chapter showed in 1994, 100 applications for non-traditional applications were made, and a further 251 applications were made in 1995.

(56) There were some applications for non-traditional marks made in the years immediately preceding the change in legislation. For example, IPGOD data show that in 1995, seventeen applications for non-traditional applications were made, and a further nine applications were made between 1991 and 1994.

(57) Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, 15 U.S.C. § 1141a(b) (2004).

(58) These applications were categorized as a combination due to the IP Australia form allowing applications to indicate their non-traditional trademark via checkbox. See IP AUSTRALIA, APPLICATION TO REGISTER A TRADE MARK, https://www.ipaustralia.gov.au/sites/g/files/net856/f/tm00001_0415.pdf.