Unconventional Trademarks and their Protection in the Legal System

We understand for "conventional" trademarks  as those that are expressed by words, numbers, images or symbols, that is, they  can only be perceived by the sense of sight. On the other hand, the so-called  "Unconventional" trademarks can be distinguished by any of the five  senses and are expressed through unusual methods, such as, for example, a type  of experience used as part of a marketing strategy in order to leave a mark on  consumers, thus in this way orienting their preferences towards a certain  offer.

The Unconventional trademarks that are mostly registered  would be:

Holographic, that is, a three-dimensional image microscopically  recorded on a photosensitive film by means of a laser beam, in such a way that  when viewed from different perspectives, the image is reflected in three  dimensions, for example, holograms used for security purposes in credit cards; Sound-brands, any sound that the consumer associates with a particular  brand, such as the unique roar of the MGM lion; Olfactory: they would be  a scent that reminds the consumer of a product, an example could be the Play-Doh  plasticine; Commercial images, that contain a set of unique  characteristics that protect the identity of a product, such as its color,  shape, packaging, etc.

In general, these types of trademarks have acquired a  certain degree of legal recognition over time; in the international area mainly  through the Singapore Treaty on the Law of Trademarks, (March 27, 2006), which  creates a framework of protection for these brands and allows each member  country the freedom to register all kinds of trademark that it considers valid.  The mentioned Treaty indicates in its regulations the way in which the  interested parties must request the representation of some of the most frequent  unconventional trademarks, see below:

“a) This Treaty shall apply to marks consisting of  visible signs, it being understood that only the Contracting Parties that  accept the registration of three-dimensional marks shall be obliged to apply  this Treaty to said marks.

b) This Treaty shall not apply to holograms or to  marks that do not consist of visible signs, in particular sound marks and  olfactory marks.” 

And, at the national regulation, through Andean Decision  486, this expressly considers some unconventional marks, such as colors,  sounds, olfactory marks and the three-dimensional mark, however, it is  relatively ambiguous with respect to other type of signs that can be recognized  as trademarks (see subsection g)).

“Article134.- For the purposes of this regime, any sign that is capable of  distinguishing products or services in the market shall constitute a trademark.  Signs capable of graphic representation may be registered as trademarks. The  nature of the product or service to which a trademark is to be applied will in  no case be an obstacle to its registration. The following signs may constitute  trademarks, among others:

a) the  words or combination of words;

b)images, figures, symbols, graphics, logos, monograms, portraits, labels,  emblems and shields;

c) sounds  and smells;

d)letters and numbers;

e) a  color delimited by a shape, or a combination of colors;

f) the  shape of the products, their containers or wrappings;

g) any  combination of the signs or means indicated in the previous sections. "

One case that obtained great jurisprudential relevance  in the field of unconventional trademarks was that of Ralf Sieckman[1].

The person in question tried to register an olfactory  trademark with the German Patent and Trademark Office, in classes 35, 41 and 42  of the Nice Classification, however, in order for his application to have a  better chance of success, he made a description of the smell to be registered:  "pure chemical substance methyl cinnamate cinnamic acid methyl ester",  accompanied by the indication of places where samples of the odor could be  found: "samples of this olfactory mark can be obtained by contacting local  laboratories ..." and he also indicated what the chemical formula of the  smell was: "C6H5-CH = CHCOOCH3." Finally, he presented an odor sample  in a container and added that it was "a fruity balsamic aroma with light  touches of cinnamon".

The application for registration was rejected by the  Court of the European Union, who came to the conclusion that "it cannot be  excluded that signs such as olfactory signs may also constitute trademarks  that, although they are not perceptible as such by sight, can be visible by  means of a graphic representation", but only "can be constituted as a  trademark, a sign that in itself cannot be visually perceived, on the condition  that it can be object of graphic representation, in particular by means of  figures, lines or characters, that is clear, precise, complete in itself,  easily accessible, intelligible, durable and objective ".

This requirement referred to the representation  "clear, precise, complete in itself, easily accessible, intelligible,  durable and objective" of the trademark, is the condition that the Courth  as used since then, and it is the one that various courts or judges put into  practice today as criteria when deciding whether an unconventional trademark  can be recognized as a trademark or not.

According to this, we can conclude that the main  problem that come up when registering an unconventional trademark is to  determine the way in which these brands can be represented graphically, so that  the owner can enjoy the rights granted by that registration. In Peru, there has  not been a considerable amount of trademark history for this type of signs,  however, over the years, large companies will use these criteria to design  types of trademarks that allow them to connect with consumers in a more  efficient way, directly, based on their preferences and the impact of what they  can see, hear or feel.