In today’s consumer society, the technical features of products and services are becoming increasingly similar and, thus, easily substitutable. A brand that adds emotion to the product or service on offer will often influence purchasing decisions. Getting potential customers acquainted with the idea that a specific color, shape, sound, moving image, taste or smell, stands for a given brand requires heavy investment in marketing and communication. Trademark registration of these “new” or “non-traditional” marks – securing exclusive rights over these brands – enables businesses to make strategic decisions concerning the use of such signs and the development of brands.
The overwhelming majority of trademarks for which registration is sought are made up of either one or several words – so-called word marks – or a drawing, picture or image – so-called figurative marks. But modern trademark law is open to other subject matter being used and protected as trademarks, provided that certain conditions are met. This development simply takes account of the fact that signs, which can be used in commerce to distinguish goods and services, are not necessarily limited to words or images. Three-dimensional (3D) designs, such as the shape of goods or their packaging, colors per se, moving images, or specific sounds or smells, are being increasingly used in marketing to individualize goods or services. And WIPO has been responsive to these developments.
In March 2006, a diplomatic conference in Singapore, which brought together 147 WIPO Member States, adopted the Singapore Treaty on the Law of Trademarks. Without necessarily creating an international obligation for the registration and protection of those non-traditional marks, the Treaty sets out a multilateral framework for the definition of criteria concerning the reproduction of hologram, motion, color and position marks and of marks consisting of non-visible signs on trademark applications and in trademark registers. The Singapore Treaty will enter into force on March 16, 2009, and the Assembly of Contracting Parties may work out the standards which it wishes to adopt in respect of non-traditional marks.
Preparatory work has already been carried out by the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT). In its last two sessions, the SCT – made up of representatives of WIPO Member States and observer organizations – has defined a number of areas of convergence concerning the representation and description of non-traditional marks, such as 3D marks, hologram marks, position marks, multimedia marks or sound marks. Those areas of convergence reflect a common approach by all WIPO Members to the representation and description of non-traditional marks and provide the first international reference in that area.
For the time being, the number of registered non-traditional marks remains very low – with 3D marks being the most common. Non-visible signs – especially taste and smell marks are still far from being commonly accepted. But keeping in mind the rapid evolution of creative marketing techniques, it is only a question of time before we see an increase in the registrations of those signs. Through the work of the SCT and with the coming into force of the Singapore Treaty, the trademark community – brand owners as well as registration authorities – will be better prepared to address the legal and administrative issues surrounding those types of marks.
By Marcus Höpperger, WIPO, Sector of Trademarks, Industrial Designs and Geographical Indications