De gustibus et coloribus... The protectability of non-traditional trademarks


The number of signs which,
in the current state of the law, is eligible for protection under trademark law
has recently increased considerably. An important cause for this was the
earlier amendment of the Trademark Regulation and Directive and also the recent
incorporation of these amendments into the Benelux Treaty on Intellectual

Since then, the
high-profile requirement of ‘graphic representation’ has been abolished.
Previously, one could only register signs that could be represented in such a
visual way, for example by a word, an image, a stave (for sound marks), etc.

The criterion of graphic representation
has now been replaced by a clear and precise representation: the sign must be
capable of being represented in such a way as to enable the competent
authorities and the public to identify clearly and precisely the subject matter
of the protection afforded to its proprietor. This can be done, for example, by
means of jpg, mp3 or mp4 files.

This amendment facilitated
the registration of a number of trademarks (e.g. sound marks) and has added a
number of new categories so that the following types of trademarks can now be
applied for:

word marks (the word
itself, without specific form)

figurative marks (with or
without word elements)

shape marks (e.g. the
specific shape of a beverage bottle)

color marks (both a single color
and a color combination)

sound marks (e.g.
advertising jingles)

pattern marks (e.g. very
well-known and distinctive clothing patterns)

position marks (a sign in a
certain place, such as a red shoe sole)

motion marks (a sign that a
certain movement is undergoing, without sound)

multimedia marks (a
combination of images and sound)

hologram marks (signs that
change appearance depending on the angle of view)

Although the European and
Benelux amendments open the door further to other atypical marks, such as
scent, taste and touch marks, some time after the introduction of the
innovations, there are (virtually) no examples of this yet. It remains
difficult to reproduce such signs in an accurate and clear manner.

Chemical formulas were
previously rejected by the Court of Justice in the well-known SIECKMANN case,
partly because of its lack of clarity for the public. The subject of this case,
however, was a rather complex odor, which SIECKMANN described as
“balsamically fruity with a slight hint of cinnamon”.

The current trend towards
the extension of trademark law, however, means that the protection of such
atypical trademarks should not be a
excluded. In the United Kingdom, the United States and especially in
Australia, fragrances are accepted as a trademark. The difficulty of the
presentation and the resulting clarity for the public can apparently be partly
offset by the distinctive character, so that simple and highly distinctive
fragrances could be registered as trademarks on more than one occasion. For
example, the scent of Play-Doh modelling clay, a rose scent for rubber tires
and a beer scent for darts.

Nonetheless, also in Europe
and the Benelux there is an (almost isolated) example of a scent mark. At the
end of the nineties, a Dutch company, SENTA AROMATIC MARKETING, managed to file
a scent mark (for tennis balls) in Europe and the Benelux. The description
The mark consists of the smell of
fresh cut grass applied to the product
” proved sufficient for the

The value of intellectual
property for companies should not be underestimated. This applies in particular
to trademarks. The expansion of trademark law is likely to continue in the same
direction and create more and more possibilities. This in combination with the
abolition of the obstacle of graphic representation makes it increasingly
interesting for companies to register their distinctive signs as a trademark.


in trademark law and can assist you in applying for or modifying your


For more information on
this subject, do not hesitate to contact Vince
or Dirk Huygens.