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Most trade marks are made up of words and images. Nevertheless, more unusual signs such as colours and three-dimensional shapes can also be protected…even if this is not easily done. Let’s take a look at the various types of trade mark.
What do you think? Is the distinctive stripe on these sneakers a design or a trade mark? In this particular case, it is actually an unusual type of trade mark. The sneaker manufacturer VANS had the stripe affixed on exactly this position on the shoe protected as a position mark.
Not only words and images can be protected as a trade mark, but also unusual signs. These include three-dimensional shapes, short melodies like jingles, colours, motion sequences of images and words, holograms, and even the fixed positioning of signs on goods.
That may sound strange, but all signs can be protected as trade marks so long as they distinguish the goods or services of one business from its competitors.
Unusual trade mark types, however, are seldom registered. In 2018, they accounted for less than 0.1 per cent of all newly registered national trade marks. Currently, there are 634 three-dimensional trade marks, 37 acoustic marks, 15 position marks, 11 colour marks and 10 motion trade marks entered in the Swiss trade mark register – as well as almost 143,000 word marks, around 91,500 combined word/figurative marks and approximately 10,500 figurative marks (source: Swissreg, 12 June 2019).
The fact that there are so few registrations is not without reason. A requirement of trade mark protection is that consumers recognise a reference to the company in question from the shape, colour, positioning of the sign or the jingle – and not simply a nice chair, a brilliant yellow, a pretty decoration or an appealing melody.
Because what we perceive as simply a common product design, and not a clear nod to the vendor, belongs to the public domain. Signs like this must be kept free for use by all competitors. Shapes and colours can generally not be monopolised as trade marks. They can only be registered as trade marks when they have acquired distinctiveness after many years of use (known as trade marks with acquired distinctiveness). This requires an intensive use of the trade mark by its owner, e.g. through marketing. A well-known example of a trade mark that has acquired distinctiveness through use is the yellow of the Swiss Post AG (RAL 1004, Pantone 116 C/109 U), which is protected for specific goods and services.
If you create a trade mark, you will probably concentrate on the usual types, i.e. word marks, figurative marks or combined word/figurative marks. Which type of trade mark you want to register for protection is an important strategic question, which a specialist can help you with. It is worth thinking through how exactly the trade mark is going to be used, for example on products and packaging, on printed materials or in advertising. And that’s exactly how the trade mark should be protected, because if you don’t use your trade mark as it’s registered, you can lose the rights to it.
But let’s go back to the sports shoe. With its v-shaped stripes, could the shoe also have been protected as a design? Yes – so long as the design was new and had individual character. However, the objective (and the scope of protection) differ: if consumers recognise the stripes as a reference to the manufacturer (“Ah, a VANS shoe!”), then protecting the trade mark makes sense. Design protection, on the other hand, is worth considering if it’s not a question of identifying the shoe as a branded shoe, but of protecting an original, decorative element of design which a company wants to use to differentiate its products from those of its competitors.
In a dispute, the court decides on the scope of protection of a trade mark in civil proceedings, or the IPI in opposition proceedings. How far the scope of protection for unconventional trade marks stretches has not yet been conclusively evaluated. For example, could the company Kraft Foods, which had the colour lilac protected for chocolate, prohibit another chocolate manufacturer from packaging their product in a different shade of violet? As there is little case law on this, it’s not possible to give a definitive answer to this question.
Pure word marks (e.g. Breitling, ABB, 501) generally provide the largest scope of protection because a term is protected abstractly – independent of its graphic representation. The right to use the trade mark is also more easily preserved because any eventual redesign will not affect the registered trade mark.
Combines word/figurative marks are a good choice if a term belongs to the public domain and can’t be protected as a word mark. If it is combined with an individual image or a special graphic design, it can be protected as a word/figurative mark. But be aware – the term on its own is not protected. It is the word and image combination – in other words the graphic design or overall impression – that is protected.
Figurative marks can be combined and used flexibly. It can also make sense to additionally protect the figurative element of a combined mark as a purely figurative mark. Otherwise, there is a risk that a competitor will take and use the image. Depending on the circumstances, the trade mark owner may not be able to take any action against this under trade mark law.
