Senior Trademark Counsel for IPR GROUP
In a world of diversity and tough competition, one cannot underestimate the value of a brand; especially a successful one. As new so-called “traditional” trademarks (usually word, figurative marks or logos) are facing more collision with existing ones, it is not surprising that manufacturers are coming up with more innovative approaches and non-traditional solutions to distinguish their products/services.
On the other hand, it is very important for companies and individuals to protect their ideas to the maximum extent, leading them to trademark their ideas whenever possible with traditional designations, generally known as word, figurative or logo trademarks.
The worldwide trademark practice is witnessing more and more forward-thinking approaches in the field of examination and registration of NTMs particularly in the United States, which is at the forefront in registration of such marks. The European Union is also moving dynamically towards a more advanced approach in the examination and acceptance of such trademarks.
In considering the CIS countries – Russia, Ukraine, Kazakhstan, Belarus, Moldova, Uzbekistan, Tajikistan, Turkmenistan, Azerbaijan, Georgia, Armenia and Kyrgyzstan –Russia and Ukraine are the two main states that can boast of quite a considerable amount of NTMs, while some of the other listed countries still have not made provision for the relevant legalities, and do not yet accept these types of marks– Kyrgyzstan and Turkmenistan (have newly amended laws), while Azerbaijan makes a few exceptions.
Trademark laws in Russia, Ukraine, Kazakhstan, Belarus, Moldova, Uzbekistan, Tajikistan, Georgia, Armenia, and Azerbaijan allow companies to obtain trademark rights in colors, three-dimensional shapes, scents, sounds, flavors, textures, and other “non-traditional” marks that identify and distinguish the source of goods or services.
In registering NTMs in most CIS jurisdictions, of what can be registered as a trademark is defined by law as follows:
Word, figurative, three-dimensional, and other signs or combinations thereof may be registered as trademarks.
A trademark may be registered in any color or color combination.
The most recognizable trademarks are usually wordmarks or logos also known as traditional trademarks. However, so-called non-traditional marks, i.e shapes, colors, sounds, motions, scents, and even tastes, may achieve protection as well.
Let’s take a look at what in fact may be registered as a non-traditional trademark in Russia, Ukraine, Kazakhstan, Belarus, Moldova, Uzbekistan, Tajikistan, Georgia, Armenia, and Azerbaijan:
I Three-dimensional (3D marks) usually more widespread among NTMs
AZ Application No 201834190 in class 33 in the name of VP Brands international SA, Bulgaria
RU trademark Certificate No 643291 in class 33 in the name of Red-Rose Tequila LLC
According to the local trademark law and rules of trademark examination, this type of mark must be non-functional in order to be granted protection.
UA certificate No 206212 in classes 12 and 18 in the name of Jaguar Land Rover Limited (UK)
Application No 201721342 TM and application No 201721344 TM in classes 12, 28 and 37 in the name of Jaguar Land Rover (UK) have recently been granted protection in Ukraine, though the registration procedure was not smooth, facing challenges from the Ukrainian PTO alongside third party opposition.
II Color marks
New applications for NTMs are not accepted in Turkmenistan under the newly amended law as of June 2019.
III Sound marks
UA trademark Certificate No 264080 in class 12 in the name of Hyundai Motor Company
AM trademark Certificate No 16235 and
GE trademark Certificate No 21799
Both in classes 29, 30, 32 in the name of MARS INCORPORATED, USA
Trademark register does not permit listening to the audio
IR 1379487 TM in classes 07, 16, 37, 39, 40, 41, 42 in the name of BP BLISTER PACK d.o.o., Slovenia was refused because no sound recording on a compact disk was provided to the Russian Trademark and Patent Office. Subsequently, protection was granted once a disk with the sound and description of the mark along with the response to the provisional refusal was filed.
Sound mark Certificate No 318691 in class 09 in the name of Intel Corporation (expired in 2015)
IV Motion marks
Certificate of Russia No 681466 in classes 25, 30, 43
The claimed designation is a motion mark, consisting of a sequence of changing images of a cook, a young man in black and white clothes and dark glasses, reproduced in a dancing movement with an expressive gesture of the hand turning the forearm and sprinkling spices on a culinary product.
According to the requirements of the Russian Trademark and Patent Office, if the claimed designation represents light or motion, then a video shall be presented, including the reproduction of the designation, giving an exhaustive and clear idea of the quantity, nature, intensity and sequence of changes on a digital storage medium and an additionally printed frame-by-frame reproduction of such designation. If, from the point of view of the applicant, the essential features of the light or motion designation do not change during the reproduction of the designation, then such a light or motion designation can be represented as a combination of several frame-by-frame images showing the exact number of changing images and the sequence of their single (unchanged) playback, as well as the change of the image…”
The Russian examination raised only one objection, which was to the misleading character of the mark, applied in the name of the company but not in the name of Nusret Gökçe ([nusˈɾet ɟøcˈtʃe], born in 1983), nicknamed Salt Bae, a Turkish butcher, chef, and restaurateur, and owner of Nusr-Et, a chain of steak houses. His technique for preparing and seasoning meat became an Internet meme. This objection was easily overcome by providing the necessary documents.
V Position marks
IR 876661 TM in class 25 in the name of Adidas AG
The mark consists of three parallel stripes; the outline of the trousers only serves to show how the trademark is applied to trousers; the stripes are along the side of the trouser legs, and can extend along the full length of the leg or a part thereof (being more than one third) and they contrast with the background colour of the trousers. The stripes can be dark on a light coloured background or light on a dark coloured background; the trademark is not limited to trousers with long legs; when applied to shorts, the stripes extend along the whole or a part (being more than one third) of the leg of the shorts.
IR 730835 TM in class 25 in the name of Adidas AG
The trademark consists of three stripes forming a contrast to the basic color of the shoes; the contours of the shoe serves to show how the trademark is attached and is no component of the trademark.
AM, AZ, BY, GE, KG, KZ, MD, RU, TJ, TM, UA, UZ – all CIS jurisdictions
IR 1055359 TM in class 25 in the name of Adidas AG in Ukraine
The mark consists of a specific toe element at the front part of a shoe; this element consists of a (rubber) cap device which includes 6 ribs over the surface of the toe and a pattern of x’s between the ribs; the dashed dark lines are not a part of the mark but are defining the position of the mark on the product.
Hologram marks, Scent marks, Touch marks are also eligible for registration in the aforementioned jurisdictions. However, we haven’t yet encountered them in our practice.
Combinations of NTMs (a motion mark incorporating sound IR 1374634 TM , etc)
With new technologies and further digitalization of all spheres of human activities, we’re witnessing more and more developments in creation of brands as well as in the practice of examination of non-traditional marks.
However, unfortunately in the CIS region, there are still jurisdictions with Intellectual Property Offices that are lacking in the technical means and opportunities to accept and examine such applications.
What is the future of NTMs? Will they overwhelm traditional ones someday? How to define the exact scope of rights offered after protection is granted for such a mark? Are NTMs eligible to be recorded in the Customs Register and is this efficient to prevent the counterfeiting efforts for such marks? These and many other questions still need to be addressed and in some jurisdictions, practice is at the inception stage of being shaped and we’re happy to witness developments in this unique and fascinating aspect of trademark protection.