Intellectual Property, Information Technology & Cybersecurity

Non-Traditional Trade Marks –Cut through the Covid Clutter

Author: Alicia van der Walt

Companies have been hard hit by Covid-19, with slashed marketing budgets. Physical distancing and Work from Home (“WFH”) has business owners adapting the way they function, which includes new and innovative marketing strategies. In this regard, non-traditional trade marks provide an effective way to futureproof the innovative promotion of their offerings. Although only a small percentage of trade mark filings consist of non-traditional trade marks, they are, in the current economic climate, fast becoming more relevant than ever to assist companies to distinguish their offering from that of its competitors.

Trade marks identify and distinguish the source of goods and services. The South African Trade Marks Act provides that a mark includes any sign capable of being represented graphically. In essence, this includes anything that can be represented visually in a clear and precise manner. Traditionally, brand owners have selected trade marks that directly fall within this ambit such as names, signatures, words, letters, or numerals. It was, however, never the intention to restrict trade marks to these traditional signs. In fact, trade mark protection that is not so traditional is readily available in the form of non-traditional trade marks. This non-traditional protection extends to product configurations, colours, scents, sounds, jingles, flavours and textures that have the ability to distinguish one company’s offering from that of another.

Although few have been registered in South Africa, it is enlightening to mention some examples of non-traditional trade marks secured outside our borders:

UPS registered the colour brown for motor vehicle transportation and delivery of personal property. Similarly, John Deere registered the green and yellow colour combination for forestry machines.

As with other trade marks, in order to secure registration for a scent trade mark the scent must be described well, must function as a trade mark, and cannot be a goods or services generic. A leading example is the scent of Play-Doh registered by Hasbro. This non-traditional trade mark is described as “a scent of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough”. Interestingly, Hasbro’s registration for the scent of Play-Doh has been described to stand out not only for its wine-tasting-menu description, but also for the length of time that it has been in use (since 12 September 1955). Further, Grendene S.A. owns a trade mark for the scent of bubble gum for their shoes, sandals, flip flops and accessories.

The shape of goods can also qualify for registration as a trade mark. Hershey’s has registered trade marks for the shape of their chocolate Kisses, having the shape of a tapered and tilting Kiss, which headlined the New York Times. In this article it was reported that Hershey’s, due to manufacturing process troubles, produced Kisses with broken tips. This greatly limited the bakers who used Kisses in their baking goods because no other candy manufacturer could make similarly shaped chocolates due to Hershey’s shape-mark registrations. Fortunately, Hershey’s appears to be fixing the broken-tip problem. Non-traditional trade marks in the form of shape-marks can also be used to promote offerings to visually impaired or blind consumers. For example, Stevie Wonder protected his name in Braille code, and the corresponding raised dots, as a shape trade mark for use in live musical performances and entertainment, and for clothing.

Sound-marks that have successfully been registered include Homer Simpson saying “D’OH” for Twentieth Century Fox’s entertainment services and the Nokia Tune.

Memorable motion-trade marks include Lamborghini’s door opening, registered with a claim of acquired distinctiveness. Yamaha even registered the recognisable spray of water from the rear of their jet-propelled watercrafts.

Touch/texture and 3D trade marks are further categories for consideration when it comes to non-traditional trade marks. As an example, The David Family Group LLC has managed to secure registration for the texture of the leather wrapping on its wine bottles.

Changing Times
Given the rapid acceleration of innovative forms of brand communication, it is arguable that non-traditional trade marks are fast becoming better suited to assist businesses in conveying their brand messages. This digital era allows businesses to communicate with consumers in a plethora of ways and no longer should they rely solely on a name, logo or slogan to promote their offerings. Ignoring non-traditional ways to market and promote a business is comparable to texting without emojis. It is possible to create brand associations with a punchy jingle or trigger a memory with a burst of sound. Creating nostalgia by virtue of a smell, laying claim to an ingenious movement or engendering loyalty with a unique product shape, is the way of the future. To differentiate its business from competitors, now is the time for companies to explore inventive ways to remain relevant and stay memorable.

Adams & Adams has long championed the adoption of non-traditional trade marks. We provide expert guidance concerning the qualifying criteria and facilitate the adoption thereof for specific business environments. Our team of legal specialists further assists our clients across the African continent with the trade mark registration process, relevant to their unique social and economic climates.

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