Can you register a trade mark for the smell of a hamburger?

Third Man Records will be opening modern vinyl pressing plant
January 23, 2017
‘Grey Goods’: Not a black and white issue in SA law
April 5, 2017

The registrability of “non-traditional” trade marks

Trade marks are badges of origin, showing consumers a link between the goods being sold and/or services being provided and their owners. In South African law, trade marks can be separated into two distinct categories: “traditional” and “non-traditional”. This article looks at how the latter can be protected.

First, what are “non-traditional” trade marks? Well, Section 2 of the Trade Marks Act 194 of 1993 defines a ‘mark’ as:

‘any sign capable of being represented graphically, including a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour or container for goods or any combination of the aforementioned’. My emphasis.

Here we see that devices (logos), names, signatures, words, letters and numerals are included in the definition of ‘mark’, and are considered “traditional” trade marks. Examples include APPLE (the word) and its logo for computers; the name JOHNNY WALKER for whiskey; the combination of letters and numerals in i20 or C200 for land vehicles, etc.

The requirements for “capability of being represented graphically” were summarised by the European Court of Justice (ECJ) in Sieckmann v Deutches Patent und Markenamt 2003 RPC 38, as:

  • Clear
  • Precise (detailed)
  • Self-contained (independent)
  • Easily accessible
  • Intelligible (logical/understandable)
  • Durable (long-lasting)
  • Objective

But what about signs, like colours, containers, shape (3D) / configuration / pattern / ornamentation marks; gesture marks, holograms, motion or multimedia marks; position or gesture marks; sound marks; olfactory, taste and/or texture marks? Surely these stretch the boundaries of the term “capable of being represented graphically”?

They do indeed. And yet, an example of a trade mark that has been registered in a foreign jurisdiction is the ‘growling’ sound of a Harley Davidson’s exhaust.

In contrast, however, our South African trade marks register is a paper/electronic registration system, so how would you represent, for example, a smell, taste or texture? The register does not allow for a smell, taste or texture to be sampled, as it is impossible to exemplify these on paper or electronically.

In the Sieckmann case, the European Court of Justice (ECJ) found that, although a sample of a smell mark had been deposited at the Trade Mark Registry; it was described as a chemical substance called ‘methyl cinnamate’; and its chemical formula was provided, it did not constitute a mark because it was not “capable of being represented graphically”.

In another case dealing with colour marks (i.e. the Libertal case), the ECJ was asked to decide whether a single colour mark was “capable of being represented graphically”.

While the court accepted that colour marks could be represented graphically, it stated that an assessment was required on a case-by-case basis, explaining that a mere sample of the colour would not be sufficient because the precise shade of the colour on paper could not be protected from the effects of time.

Furthermore, the ECJ held that a mere description would not normally suffice and that an internationally recognised identification code (like the Pantone colour code) might be needed to meet the graphic representation requirement, because codes are considered precise and stable.

What’s the bottom line?

In summary, it is clear that the registrability of “non-traditional” trade marks is not an easy one (even for the courts) to decide.

The Companies and Intellectual Property Commission (CIPC) has issued its set of guidelines with regard to the lodging of “non-traditional” trade mark applications.
The take-away from this is: when filing a “non-traditional” trade mark, be very careful as to how it is filed and prosecuted to grant and registration.

Here are the highlights:

  • You need to meet the Sieckmann requirements in order for your “non-traditional” trade mark to be ‘capable of being represented graphically’, and thus registrable.
  • The CIPC’s guidelines in its notice on “non-traditional” trade marks’ filings are highly informative, providing CIPC requirements for “non-traditional” trade marks.
  • Always speak to a skilled Intellectual Property attorney before filing a “non-traditional” trade mark application, to determine whether it is registrable and then to file the application correctly and include the necessary descriptions.
  • If you’d like some guidance on trade marks, patents or any element of Intellectual Property law, email me at Feel free to pass on this newsletter.

This newsletter does not deal with every important topic, element or change in the law, and is not intended to be relied upon as a substitute for legal or other advice that may be relevant to deal with the reader’s particular set of facts and circumstances.

Comments are closed.