Trade marks are traditionally perceived as words, numbers, pictures, symbols or combinations of these elements. However development of marketing and promotional strategies has broadened the scope of what is considered to constitute a trade mark. Therefore, colours, shapes, moving images, holograms, even sounds, scents and tastes nowadays may serve as marks distinguishing the goods and services of one person from those of another. Although the description of non-traditional mark is accepted worldwide, registrations of such marks face serious difficulties in practical registration procedures.
Most usual of the unusual trade marks and perhaps most widely applied for are shape marks or the three-dimensional (hereinafter – 3D) marks. Still the 3D marks are facing challenges in passing the examination on absolute grounds in Lithuania. Notably, three-dimensional form (the shape of products, their packaging or containers) is included in the list of marks with respect to which legal protection under Trade Mark Law of Lithuania (hereinafter – Law) is applicable. Yet in the practice application of a plane 3D shape without any other wordy or figurative distinctive elements is generally sentenced to fail first examination in the Patent Bureau of Lithuania (hereinafter – SPB) and is provisionally refused in most cases. However recent decisions of the Appeal Division of the SPB have brought some eligibility and identified the actual criteria applied for the 3D marks.
With the decision of September 28, 2011 the Appeal Division has satisfied appeal filed in the name of applicant Kabushiki Kaisha Yakult Honsha due to the registration of 3D trade mark – bottle device, depicted in the picture.
The appeal was supported by the arguments that the 3D mark is an original form created in 1965 and introduced on the market in 1968. The form distinguishes by the specific features: the body of the bottle is visually divided by straight lines into four parts of different dimensions – oblique neck of the bottle, straight part of the body, narrowed middle of the body and straight body again at the bottom. Hereby the bottle repeats the lines of woman’s figure in a very stylized way.
The following characteristic points may be crystallized from the above decision of the Appeal Division and these should be taken into account when filing 3D mark application in Lithuania:
- Plane 3D shape without any other additional elements may constitute a trade mark per se, i. e. no supplementary word or figurative elements should be required for the registration to be accepted.
- Nevertheless the 3D mark should also significantly differ from the common examples and practice of the market.
- When estimating distinctiveness of the 3D mark, it is essential to evaluate the whole shape and common impression presented by the mark, since the way of presentment of various elements allows reaching entire esthetical result.
- Neither 3D shape of packaging (containers, bottles, etc.) nor separate elements of it (handle, cap, etc.) shall be deemed to be consisted of the shape which is necessary to obtain a technical result on the mere fact that it’s initial purpose is technical – to store, convey, lift, carry, outpour. Instead it is crucial to evaluate the originality and distinctiveness of the specific form and not the object itself.
Another type of non-traditional trade marks are colour marks, which appears even more complicated to pass through the registration requirements. The Law defines a mark which may be registered as a trade mark quite liberally. Colours or combinations of colours and their compositions are covered under provision of applicable marks by the Law. However the Rules on Examination of Trade Marks ZR/03/2004 constrict this provision by stating that a mark shall be declared devoid of any distinctive character if it consists of only one colour or two colours (especially basic ones) represented in basic geometrical shape (usually in a square) unless the mark conforms to the following provisions set in the same Rules:
- the colour has obtained secondary meaning among consumers;
- the colour does not bear any functional or practical value in relation to the goods/services concerned;
- the colour does not posses any competitive need within the market of the goods/services concerned.
Therefore, in principle allowed for registration, in practice colour marks meet strict requirement of acquired distinctiveness to be fulfilled though. Taking into account the above provisions, it is transparent why only a narrow number of colour mark applications are awarded a registration in the SPB.
For example, with the decision of June 20, 2012 the Appeal Division has rejected the appeal filed in the name of applicant “Humana people to people Baltic” due to the registration of colour trade mark – yellow and blue color combination, depicted in the picture.
The applicant indicated that in this particular case the Appeal Division did not take into account the fact that the application was for two colour combination. The Appeal Division has noted that there are the same evaluation criteria for combined colours applications. In September 2012 this particular decision was appealed to the Vilnius Regional Court
Summarizing the above, it should be pointed out that although it is still arguable if the colour mark in questions has actually acquired distinctiveness through use or not, the major obstacle for clear registration of colour marks in Lithuania today is unsettled and even contradictious practice of the Appeal Division of the SPB as concerns registration of the colour mark. Unfortunately this obvious instability leads applicants into disorientation and even loss of their legitimate rights.