We begin with our axiom that trademarks play a pivotal role in regulating the socio-economic interactive relationship between the producer-distributor-consumer or end-user triumvirate. As such, conceptual perspectives on the nature and scope of protectable marks have been the subject of continuous evolution over the years in response to the commercial transformation of successive technological epochs, hence the incessant emergence of new types of marks clamouring for protection, in turn, leading to wholesome legal reforms reflective of market realities.
On the international scene, the Paris Convention on the Protection of Industrial Property (Paris Convention) (1967) has been constantly revised to accommodate pressures for legislative reforms. So too was the underlying spirit behind the conclusion and adoption of the Agreement on Trade Related Aspects of Intellectual Propertry Rights (TRIPS Agreement) (1994) which proactively addressed the clamour by providing for a substantive non-exhaustive definition of what constitutes a trademark.
As such, barring inconsequential variance in syntactical construction, national and regional trademark legislative innovative initiatives elsewhere across the globe compliantly followed suit. Apparently, the European Union (EU) Council Directive 89/104 and the United Kingdom (UK) Trade Marks Act (TM) 1994 anticipated the TRIPS Agreement and provided for substantially similar definitions of the modern notions of trademarks.
Liberal interpretation universally adopted
In line with technological advancements, related commercial practice transformations and corresponding legislative innovative reforms, the courts the world over have since the late 1990s consensually adopted a universally liberal interpretation of the notion of a mark as a very broad, open-ended, non-exclusive and general term, ecompassing all conceivable types of marks, including sound, smell, colour and three-dimensional marks, of course, pioneered as usual by the US, EU, UK and Benelux countries.
Three threshold requirements distilled
Borrowing from Article 2 of the EC Council Directive 89/104, one of the most comprehensive on trademarks, modern era trademarks are defined as: “…… any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods (configurations) or of their packaging (containers or packaging), provided such signs are capable of distinguishing the goods of one undertaking from those of other undertakings”- (my own emphasis).
Distilled from these definitions, there are three prerequisite threshold requirements which must be cumulatively satisfied for a mark to be registrable, namely; list of species of probable signs or marks, capability of graphical representation, and capacity to distinguish, hereunder canvassed.
List of signs
The term any sign, especially as read in combination with the words particularly and including, has been held to permit a very broad interpretation of protectable marks to include non-traditional species of marks such as sounds, smells, colours and three-dimensional configurations so long as they satisfy the thresholds of graphical representation and distinguishing capacity. The rationale being that there is no category of signs which is automatically excluded from protectability by reason only of not being explicitly referred to in the definition. The attendant underlying public policy ground is not to unduly hinder or stifle the smooth development and progress of science, trade and commerce.
Envisaged by this prerequisite is a mark or sign which can be perceived visually by means of numbers, lines or characters in such a manner that it can be identified by the end-user with much precision because it is clear, precise, self-contained, easily accessible, intelligible, objective and durable, irrespective of the category of signs.
The necessity of graphical representation is hinged on public policy grounds based on socio-economic consideration of trademark functions and the monopolistic implications of the rights bestowed on the owners upon registration, obviously with a view to safeguard the competing interests among the consuming public, owners and fellow traders for the common good of everyone in society. For, graphical representation is unequivocally an essential element towards ensuring legal certainty and sound administration.
In pursuance whereof is required a clear, precise and objective mark that enables end-users of the Trademark Register such as competent authorities, the consuming public, and especially, fellow traders to determine the exact nature and scope of the mark to be registered. In view of the potentially infinite renewal periods accorded to trademarks, durability becomes yet another requisite essential characteristic to ensure prolonged endurance of the mark’s protected essential features or integers.
Smell or olfactory marks
In Sieckman Groep Bv vs Deutsches Patent UND Markenant (2003) it was held that “….. a trademark may consist of a sign which is not in itself capable of being perceived visually, provided it can be (sufficiently) represented graphically” in accordance with the statutorily prescribed accepted elements. However, a mere chemical formula, written description, deposit of the sample or a combination of these elements without more would not suffice.
Sound or auditory marks
In Shield Mark BV vs Joost Kis H.O.D.N Memexe (2004) the court held that graphical representation of a sound mark is satisfied by “…. a stave divided into measures and showing in particular, a cleft, musical notation and rests whose form indicates the relative value and, where necessary, accidentals.” Where the instruments form part of the mark this should be specifically stated. However, the requirement would not be met where the graphical representation is done by means of say, written description of musical notes, musical titles or simple onomatopoeias.
In Libertel Group vs Benelux Marken-Bureau (2004) FSR (ECJ) the court held that the requirement of graphical representation may be satisfied either by a “….. sample of colour, combined with a description in words of that colour” or by the “….. systematic arrangement associating the colours in a predertermined manner and uniform way…” consistent with internationally recognised identification codes, or from prior repeated and aggressive use thereof.
Note, filing of a colour sample per se or a verbal description of the constituent elements of the colour does not qualify as graphical representation of a colour mark. However, depending on the factual circumstances of each case, a written description may or may not satisfy the graphical representation requirement.
Three dimensional signs
In Beecham Group PLC vs Triomed (2002), the South African High Court adopted the persuasive authority of the European courts and held that, with three dimensional signs, graphical representation can be satisfied by the filing of pictorial representations, whether in combination with a written discription or colour thereof. However, where such representation combines colour, the monopoly granted by subsequent registration would be limited to that colour representation only. Where the mark is filed in black and white without any other colour claim then the monopoly granted thereby would be construed as covering every other colour.
From the foregoing we certainly find that there is even more creative ingenuity in the new types of marks worthy of much broader protection than that enjoyed by traditional marks.