Are non-traditional trademarks a viable amendment to the IP Code?

(William Shakespeare, Romeo and Juliet)

In this article, we discuss non-traditional trademarks (NTMs), a growing worldwide phenomenon in the trademark universe. NTMs are "types of signs that are nowadays considered as being capable of constituting a trademark … beyond words or figurative devices" (WIPO, New Types of Marks, September 1 2006), including single colours, shapes, sounds, smells, video clips, holograms, positions, motion and even taste and touch marks. The adoption of NTMs expands the domain of trademark law and the scope of trademark protection significantly.

This undermines Shakespeare's poetic observation that the smell of the rose takes precedence over the name rose. From the perspective of expanded trademark protection, they seem to be given equal importance.

Innovative marketing and communication strategies, new branding methods, massive use of the internet and social networks by consumers, globalisation of trade and global distinctiveness of signs, fierce competition among exporting companies, enhanced risks of trademark misappropriation prior to protection abroad; all these new trends have contributed to the expansion of the types of signs which are today capable of constituting a mark (Denis Croze,'Making a large universe visually perceptible: the development of non-traditional marks in WIPO treaties', The Protection of Non-Traditional Trademarks: Critical Perspectives).

Despite introducing major changes to traditional trademark law concepts, many trademark offices in the world have included the protection of NTMs in their trademark laws.

On December 22 2017, the Intellectual Property Office of the Philippines (IPOPHL) published its proposed amendments to the Intellectual Property (IP) Code of the Philippines, also known as the Republic Act 8293.

The proposed amendments cover various aspects of the IP Code. This article will focus on Sec. 121. 1 of the IP Code which provides:

The proposed amendment provides:

Upon the passing of these amendments, non-visible signs may be available for registration.

Not surprisingly, the inclusion of non-traditional marks in the canon of protected signs raises severe problems within the system of trademark protection. The erosion of the traditional mark/product dichotomy, the risk of exhausting the spectrum of attractive signs and granting anti-competitive control over important signs in a given category, the tendency of over-protecting non-traditional marks in the absence of well-developed defences, and the deterrent effect of excessive trademark infringement claims and related litigation costs are examples of legal doctrinal and practical challenges (Irene Calboli and Martin Senftleben, 'Introduction', The Protection of Non-Traditional Trademarks: Critical Perspectives).

Likewise, the recognition of new types of marks substantially broadens the areas of overlap between trademark, industrial design, and copyright protection. Three-dimensional objects may serve as shape marks, enabling right holders to obtain unprecedented opportunities to acquire an amalgam of trademark, industrial design, and copyright protection.

NTMs can have serious effects on market competition as these marks often protect products, or parts of products. That the protection granted to trademarks may last in perpetuity aggravates the problem. In the case of non-traditional marks that acquire the status of well-known or famous marks (US), trademark law enhances the corrosive effect of protection by extending the scope of protection to dissimilar goods and services and use in non-competitive situations (Calboli and Senftleben).

Registrability of NTMs should be subject to restriction against violation of freedom of expression.

Article III, Section 4 of our Constitution provides:

"SECTION 4. No law shall be passed abridging the freedom of speech, of expression, or of the press."

One of the basic functions of a trademark is to communicate to the public the origin or source of the product. The use of NTMs, if it conveys information about a product's source should qualify as expression.

Granting registration of NTMs that contain inherently valuable expression causes substantial harm to freedom of expression. Registration discourages use of this message by many other companies and people who may want to communicate using the same shape, colour or other expressive product feature (Lisa P Ramsey, 'Non-traditional trademarks and inherently valuable expression', The Protection of Non-Traditional Trademarks: Critical Perspectives).

Because the non-visual or non-verbal nature of certain non-traditional marks makes it more difficult to determine what is registered and protected as a mark, NTMs unjustifiably prevent more expression. The exact contours of a mark consisting of a scent, sound, flavour, or texture may be unclear. Moreover, shapes, colours and other features of a product are not always used as source-identifiers, so accused infringers may not know someone else claims ownership of a trademark in a product feature until they receive a demand letter or complaint. Competitors, artists, news reporters, and other companies and people engaging in expression may self-censor once they are accused of infringement or dilution because they cannot determine what is protected as a mark or whether a threatened trademark lawsuit will be successful (Ramsey).

It is suggested that legislatures amend their trademark laws to deny registration and protection to "matter which was inherently valuable expression before it was adopted or used as a mark" (Ramsey).

What is inherently valuable expression?

New shapes, sounds, scents, and other non-traditional subject matter independently created by the trademark owner to identify and distinguish its goods or services would not be inherently valuable before it was adopted or used as a mark, and would therefore be capable of registration and protection if it is distinctive, not functional, and meets other requirements in the trademark law. Examples include the LEGO Minifigure product configuration, a new jingle created for use in advertising and selling a product, and Play-Doh's "scent of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of salted, wheat-based dough." On the other hand, all colours and pre-existing representational shapes (e.g. a human skull), sounds (e.g. a lion's roar) scents (e.g. bubble gum), flavours (e.g. chocolate), and textures (e.g. leather) all arguably have inherent value regardless of the goods or services sold in connection with the mark. They should remain in the public domain for everyone to use in the marketplace (Ramsey).

Trademark laws are also less likely to conflict with free expression if protection is granted to non-traditional marks with strong and substantial evidence of acquired distinctiveness through use, and registration and protection of matter that is functional, ornamental, decorative or informational is prohibited. The trademark application should describe, display, or otherwise convey the content of the mark in a clear and precise way so that others have sufficient notice of what subject matter is registered or protected under the trademark law.

Trademark laws are also less likely to conflict with free expression if protection is granted to non-traditional marks with strong and substantial evidence of acquired distinctiveness through use, and registration and protection of matter that is functional, ornamental, decorative or informational is prohibited

It is also important for legislatures to enact defences such as fair use of non-traditional marks to describe a product's qualities or characteristics, honest referential or nominative fair use of another's mark, use of marks in comparative advertising, news reporting, consumer product reviews, criticism, teaching, scholarship, entertainment, parody, satire, and other editorial, educational, artistic, or literary expression.

Use of ornamental, decorative, informational NTMs, or which convey other non-source-identifying messages before it was adopted or used as a mark should not constitute infringement (Ramsey). 

EU trademark law has a novel kind of limitation. Its adoption should complement the measures to protect the freedom of expression.

Article 6(1) (b) TMD 2008/95/EC stipulates that the proprietor of a trademark cannot object to use of "indications which are not distinctive or which concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services", provided that use is made "in accordance with honest practices in industrial or commercial matters" (Annette Kur, 'Yellow dictionaries, red banking services, some candies, and a sitting bunny: protection of color and shape marks from a German and European perspective', The Protection of Non-Traditional Trademarks: Critical Perspectives).

This covers descriptive signs which, even when they are registered after having acquired distinctiveness, still contain residues of their original descriptive character that others are free to make use of. Inherently indistinctive signs as well will never become the "sole property" of the trademark holder, but must leave room for use by others that only relates to the sign in its original, non-distinctive capacity. Such use can only be found infringing if it clashes with fundamental standards of honest commercial practices (Kur).

When a mark, after having been registered due to acquired distinctiveness, loses part of its distinctive force for factual reasons, for example due to budget-cutting in the area of advertising, the mark remains valid, but it is "limping". In this context, competitors may point to the lack of distinctiveness of the mark or, more precisely, to the (corresponding) non-distinctiveness of the identical or similar sign they are using themselves (Kur).

The key issue for evaluating whether a trademark that is considered limping is infringed is to consider whether the use complies with "honest practices in trade and commerce".

In determining what constitutes honest practices in trademark commerce, the concrete manner and dimensions of the use made must be appraised for their appropriateness and proportionality in view of all circumstances. Furthermore, the principle should be established that insofar as the limitations apply, use of the mark can only be qualified, but not entirely prohibited (Kur).

Section 124 of the IP Code of the Philippines, states what the requirements of a trademark application relating to NTMs are:

Should the proposed amendment allowing the registration on non-visual marks be enacted into law, we propose the adoption of a regulation regarding sound marks, viz:

Regarding olfactory marks, instructive is the ruling of the ECJ in Seickmann v Deutches Patent-und Markenamt, Case C-273/00, [2002] ECR I-11737 (ECJ Dec. 12, 2002). The ECJ concluded that a scent could not be graphically represented, the court emphasised the centrality of this requirement for the effective functioning of the registered trademark system. The representation should identify the protected subject matter with precision and thereby allowed the mark to be placed on a public register from where it would be accessible by the trademark bureaucracy and the general public including competitors. Representations therefore had to be comprehensible and clear (Dev S Gagjee, 'Paying the price for admission: non-traditional marks across registration and enforcement', The Protection of Non-Traditional Trademarks: Critical Perspectives).                                                                                                        .

Ignacio S Sapalo
		Ignacio S Sapalo is the managing partner at Sapalo Velez Bundang & Bulilan. He was the director of the Philippine Bureau of Patents, Trade Marks and Technology Transfer from 1987 to 1996. As director he was responsible for drafting the IP Code of the Philippines. He is the author of “Background Reading Material on the Intellectual Property System of the Philippines” (WIPO, 1994) and has been a professor of IP at the Ateneo School of Law since 1991 and at the Jose Rizal University since 2016. He is a member of various international associations of IP attorneys.

Kristine Sherika P Chy
		Kristine Sherika P Chy is a junior associate at Sapalo Velez Bundang & Bulilan. She obtained a Bachelor of Arts in political science in 2013 from the Ateneo de Manila University, and a juris doctor degree in 2017 from the Ateneo Law School. In 2018, she was successfully admitted to the Philippine Bar. She primarily handles intellectual property cases, as well as maritime, civil and litigation cases.