Non-Traditional Trade Marks…how far is too far?

Friday 5th December 2014

Under the New Zealand Trade Marks Act 2002, a “trade mark” is defined as “any sign capable of:

  • (i) being represented graphically; and

  • (ii) distinguishing the goods or services of one person from those of another person. 

A “sign” is further defined as including:

  • (a) a brand, colour, device, heading, label, letter, name, numeral, shape, signature, smell, sound, taste, ticket, or word; and

  • (b) any combination of signs. 

In theory then, almost anything may form a trade mark provided it is capable of acting as a badge of origin.  Sounds pretty good right?
So, how far have what we class as “non-traditional” trade marks actually come?  That is, those trade marks that are out of the norm such as the registration of a shape, sound, smell or taste.

A recent case of New York Pizzeria, Inc. v. Syal tested the limits of non-traditional trade marks in the USA.  A Texan pizza chain, New York Pizzeria, Inc., alleged that the new restaurant on the block, Gina’s Italian Kitchen, infringed New York Pizzeria’s distinctive food flavours and plating methods.  Gina’s Italian Kitchen was formed by the former vice president and business partner of New York Pizzeria.  New York Pizzeria alleged that Gina’s Italian Kitchen obtained unauthorised access to its franchisee website which contained its trade secrets, namely, recipes.  New York Pizzeria claimed that it was entitled to protection under the Lanham Act (legislation which governs trade mark law in the USA) because its “specially sourced branded ingredients and innovative preparation and preservation techniques contribute to the distinctive flavor” of its dishes. 

In order to function as a trade mark, a mark must either be inherently distinctive or it must be shown to have acquired distinctiveness by virtue of its use, that is, consumers must have been taught to associate the mark with a particular trade source.  New York Pizzeria failed on the basis of: (i) a lack of inherent distinctiveness or acquired distinctiveness; and (ii) functionality.  Making a comparison with colours, the Judge was of the view that it is unlikely tastes can ever be inherently distinctive because, like colours, consumers are unlikely to associate them with a trade source without being educated to identify them as such.  So then, tastes like colours will need to establish acquired distinctiveness to assume the mantle of a trade mark.  Are tastes ever likely to reach this threshold?  Are consumers ever likely to learn to associate a food’s taste with its trade origin? 

In New York Pizzeria, Inc. v. Syal, the Judge considered that even if a taste may be capable of acquiring distinctiveness, it would be extraordinarily difficult to show that taste is not a functional element of the dish.  Trade mark laws typically do not afford protection to purely functional features.  In the Judge’s view, aside from sustaining life and curbing hunger, taste is a core attribute of food and a food’s flavour affects its quality and therefore has a functional purpose.  The trade mark claim was therefore dismissed in the context of taste.

Turning to the claim of infringement of New York Pizzeria’s plating methods, the Judge thought that trade mark protection could extend to plating of food provided the plating was shown to be inherently distinctive or to have acquired distinctiveness; it was not purely functional; and consumer confusion was likely to occur in the circumstances.  The claim was dismissed because New York Pizzeria failed to identify what it considered to be actually distinctive about its plating methods, which dishes it pertained to, why the plating was not functional and how infringement had occurred.  Nevertheless, it remains possible that distinctive signature dishes could meet the high threshold set and assume trade mark status in certain circumstances.

While taste trade marks in food may remain somewhat elusive, they can perhaps exist elsewhere where not functional. Although, examples of non-functional aspects do not readily come to mind.  Restauranteurs, chefs and those in the food industry can of course rely on trade secrets to protect the intellectual property in their recipes. 
Brands comprising words, shapes, colours and sounds are less likely to be purely functional.  Take, for example, the FORMICA brand which is registered phonetically, that is, as a sound trade mark, in New Zealand:

The brand is the sound heard or imagined when reading the word FORMICA, a cutting edge of non-traditional trade mark protection created by the author.  This sound trade mark has recently been the subject of high level intellectual property discussions particularly at the most recent Asian Patent Attorney Association meeting held in Penang in November 2014.

Other examples of registered non-traditional trade marks include: The Coca-Cola Company’s Coca-Cola bottle shape for non-alcoholic drinks and related beverages;

Cadbury UK Limited’s Colour Purple for block chocolate; chocolate in bar or tablet form;

BP p.l.c.’s yellow and green colours as applied to the exterior surfaces of its petrol stations for fuels and related goods and services.

Intellectual property offices (IPOs) around the world are taking a narrow view of trade marks seeking registration in the context of acquired distinctiveness, that is, applicants seeking to register non-traditional trade marks.  Often registration of a particular brand such as a colour, shape, sound or similar is refused on the basis that the evidence of use filed to support the trade mark’s registration shows use of the brand together with other brands such as a word mark, logo, etc and therefore does not equate to the use of the mark for which registration is sought. 

Take for example a jar of VEGEMITE spread:

many brands appear together on the jar: the obvious word mark VEGEMITE, the VEGEMITE Logo:

the distinctive Yellow Cap:

the Red and Yellow label:

the word KRAFT and so on. 

All these elements, both traditional and non-traditional, function as a brand in their own right, acting as an indicator of origin for consumers.  Why then are IPOs refusing to recognise the contribution each element makes in its own right, regardless of other brands which may also appear on the packaging?  This relatively recent narrow registry view does not stand well with many IP practitioners and should not dissuade IP owners from attempting to register their distinctive albeit non-traditional trade marks.
This article is intended to summarise potentially complicated legal issues, and is not intended to be a substitute for individual legal advice. If you would like further information, please contact a Baldwins representative.

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