When IP lawyers in Africa want to know where IP is headed, our gaze often turns to Europe. And for many of us, there is only one place to go - the IPKat blog. In this article, we will discuss some recent IP developments in the European Union ("EU").

Smell trade marks - scented golf balls

It is, of course, possible to register a smell as a trade mark, but, it is never easy. When it comes to smell (aka olfactory) trade marks, the first port of call tends to be the famous Sieckman case, a case which said that:

  • To be registrable, the representation of the mark must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.
  • A trade mark might comprise all sorts of interesting things such as a chemical formula, a code of an international classification of smells, a sample of the smell, and a colour code used by the perfume industry.

Yet things are looking bleak. An IPKat blog posting tells us about a trade mark application that was recently filed in Germany in class 28 for 'sporting articles', with the mark which sought to be registered to be a smell described in the following terms: 'The mark consists of the smell of honey from nectar of the common heather flowers (Cannula Vulgaris) on golf balls.' This further description accompanied the application: 'Commercially available golf balls are odour-free. Heather blossom honey, here in the form of honey from the nectar of flowers of the heather species ''heather flower'' (Cannula Vulgaris) has...a characteristic, strong, aromatic, bitter smell. The trade mark consists of precisely this smell on golf balls.'

The IPKat posting tells us that the German Trade Marks Office refused the trade mark application. The basis for the refusal was that the trade mark was not represented in a way that allowed the authorities to determine exactly what the subject matter of protection was. This refusal was taken on appeal to the German Patent Court. The court dismissed the appeal, on the basis that the representation of the trade mark was not sufficiently clear and precise.

The court made the point that representability is a central legal requirement which creates a fixed form of the trade mark to determine both grounds of refusal and genuine use. The court said that a trade mark must be clearly defined and sufficiently precise. It went on to say that a description of a smell as 'bitter' won't cut it (far too vague), and nor will terms like 'strong' and ' aromatic', which are subjective.

IPKat is of the view that, as things stand, smell trade marks are a no-go in the EU: 'It is currently not possible to represent smells in compliance with Article 4 EUTMR as the subject matter of protection cannot be determined with clarity and precision with generally available technology.'

Colour trade marks – gold-coloured shoe soles

We are all familiar with Louboutin's red-soled shoe, but now there's a gold-coloured shoe sole that it claimed performs the role of a trade mark.

According to an IPKat posting, the European Union Intellectual Property Office ("EUIPO") recently refused an application to register metallic gold soles for footwear. The trade mark, which had been filed in the name of a company from Puerto Rico, Yeshua Investment Consulting LLC, was described as 'metallic gold outer soles sold as an integral component of men's and women's shoes'.The EUIPO took the view that the gold sole had no distinctive character and therefore didn't fulfil the function of a trade mark. According to the posting, metallic gold on footwear is quite common, and a single colour will generally not be regarded as an indication of origin. In this case neither the colour nor the positioning of the colour created distinctiveness.

Well known trade marks ....watches and racing car drivers

The company that manages the IP rights of one Sir Lewis Carl Davidson Hamilton, MBE, (let's call him Lewis Hamilton, shall we) applied to register the trade mark "Lewis Hamilton" in the EU in a range of classes 3, 9, 14, 16, 18, 25, 26, 28, 35 and 41 – although the trade mark application was subsequently narrowed down to classes 14 and 35. The trade mark application was opposed by a company called Hamilton International AG, and the opposition was based on an EU trade mark registration for Hamilton in classes 9 and 44 covering, inter alia, watches and clocks. This trade mark has apparently acquired a reputation. Lewis Hamilton contested the opposition, and argued that there would be no confusion between the trade marks because "I am so well known!"

Had this matter been in the UK, Lewis Hamilton's argument may have prevailed. But the EU is a different place, one that the UK is no longer even part of. The EUIPO Board of Appeal ("BOA") held that the name Lewis Hamilton doesn't count for much in the EU where Bulgaria, Croatia, Estonia, Latvia, and Lithuania are mentioned as countries for which there is no information about how many people follow Formula One. And this fact unearthed by the EUIPO Board of Appeal must surely hurt whereas Lionel Messi has 106 million Facebook followers, Lewis Hamilton has a mere six million. As for the fact that Lewis Hamilton received the 'the most remarkable athlete' award back in 2014 - well that bit of old news didn't impress the EUIPO BOA much!

Poor Lewis – not only does he face tough competition on the track against Max, but it turns out his fame isn't nearly as widespread as he thinks!

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