The popularity of non-traditional trade marks is increasing worldwide. A non-traditional trade mark can be an extremely useful tool to innovative businesses, provided the registration hurdles can be overcome. They are a great way to cleverly differentiate your business from another – particularly in a crowded market.

What is a non-traditional trade mark?

A non-traditional trade mark can consist of a:

  • colour or colour combination
  • sound
  • smell
  • taste
  • texture
  • pattern
  • 3D mark
  • hologram
  • motion mark
  • position mark

Previously, under the UK Trade Marks Act 1994, for a trade mark to be registrable it had to be represented graphically. Whilst this did not mean that signs which could not be seen visually were automatically excluded from protection, it was often problematic for a non-traditional trade mark.

Case law held that graphical representation of a mark by means of images, lines or characters would be sufficient, provided that the representation was clear, precise, self-contained, easily accessible, intelligible, durable and objective (ECJ, Case C-273/00, Sieckmann v German Patent and Trademark Office). Although the aim of the case law was to clear up the 'graphical representation' issue, it remained problematic. It was difficult to represent a sound mark, for example, in a form that was clear and easily accessible to the average consumer.

Further, even if the graphical representation hurdle could be overcome, non-traditional marks were often refused protection on this ground of lack of distinctiveness. 

How has the increase in technology assisted registration of non-traditional trade marks?

However, given the increasing use of technology in virtually all households, some of the issues surrounding representation of non-traditional trade marks have fallen away. For example, a sound mark can be represented by way of an MP4 recording on the Register, which is easily accessible to the average consumer.

Accordingly, the wording of the 1994 Act was changed in January 2019 to state that a trade mark must be represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor.

Can a non-traditional trade mark be distinctive?

Whilst the issue surrounding representation has reduced, non-traditional trade marks often face distinctiveness issues.

Although they should not face a tougher examination process than your standard word or logo trade mark, it is difficult (if not impossible) to register a non-traditional trade mark without evidence of earlier use in order to claim acquired distinctiveness.

However, provided you have use of a non-traditional trade mark, applying for protection is likely to be worth the additional effort. It is obvious that the role of non-traditional trade marks are only going to increase, as the current figures have shown, and so the increased protection of these IP rights are also obvious.

Filing figures of non-traditional trade marks

The following non-traditional trade marks have been filed and registered at the EUIPO since 2016, showing the increase over the years:

Type of mark

2016

2017

2018

2019

Colour

19 filed

7 registered

30 filed

11 registered

29 filed

12 registered

29 filed

13 registered

Motion

-

not recognised separately

10 filed

4 registered

33 filed

20 registered

31 filed

26 registered

Multimedia

-

not recognised separately

5 filed

4 registered

15 filed

10 registered

20 filed

17 registered

Position

-

not recognised separately

20 filed

8 registered

55 filed

17 registered

80 filed

23 registered

Sound

15 filed

10 registered

22 filed

11 registered

23 filed

17 registered

52 filed

37 registered


Kemp Little are well placed to advise on the registrability of non-traditional trade marks.