How Sieckmann v Deutsches Patent- und Markenamt makes it difficult for trademarks to be registered.
Theimportance of trademarks cannot be gainsaid as far as thesustainability of any business entity is concerned. This isespecially considering that these signs are indicators of the sourceand quality of the products offered to the consumer and also functionas vehicles for marketing and advertising. It has well beenacknowledged that buyers often “buy into” the type of lifestylethat a luxury mark seems to suggest. Of particular note is the factthat the indication of commercial source is the most fundamentalfunction of the trademark. A large number of marks incorporate visualsigns such as symbols and works, in which case they can be easilyrecorded in the register. Indeed, the European trademark legislationstipulates that any “sign” that has the capacity to distinguishcan be registered as long as it has the capacity for graphicalrepresentation in which case it may be recorded in the register. Thismeans that registration is not restricted to symbols and words ratherother visual marks, including colors, can be registered. There hasbeen contention, however, regarding the registration of non-visualsigns like musical jingles and smells. Indeed, quite a number ofolfactory marks had been successfully registered in the 20thcentury. However, the John Lewis of Hunderford Ltd’s TrademarksApplication raised concerns regarding universal recognition. Thisapplication pertaining to the cinnamon essence as applicable to theirfurniture was said to erroneously assume that this essence wasuniversally acknowledged. This gave rise to the Sieckmann v DeutschesPatent- und Markenamt, where the applicant took a considerably moresophisticated technique in his efforts to register “methylcinnamate” olfactory mark offering a sample, formula and evenchemical name for the same. This registration, nevertheless, presentsquite a number of challenges even in the current times with regard tothe graphical representation. The ruling in Sieckmannv Deutsches Patent- und Markenamt createdthe criteria that now makes up the legal standards for trademarks. Inthis case, trademarks must be clear, precise, self-contained,easily-accessible, durable, intelligible, and objective. Indeed, withregard to olfactory marks, Sieckmann did not entirely object to theirregistration as he opined that is was not necessary that a sign isvisually perceived as long as it could be graphically represented.
However,the Sieckmann Criteria has had disproportionate effects on theregistrability of trademarks and is beyond the available technologyin which case it should be reviewed. First, it is well noted thatthere is an element of subjectivity in the color perception, in whichcase two individuals would not have the same view of the same shade.Indeed, advocates have insinuated that shades may easily vary withthe individual eyes, distance from which they are viewed, as well asthe intensity of light. Indeed, the use of recognized color codes maynot be sufficient to satisfy the registration criteria in instanceswhere the colors or their manner of presentation is not defined in aprecise manner. There exists numerous techniques for allocating twoshades, as well as combinations that consist of more colors. Thismeans that a liberal approach to the graphic representation regardingcolor marks would be impermissible as it may result in legaluncertainty, as well as the possibility for abuse of rights that comewith trademarks. This implies that such an approach would give theproprietor too much protection claim, while consumers would beincapable of remembering the exact blends and, therefore, not evenassociate colors with particular brands.
Further,the distinctiveness requirement may be explained as pertaining to thequestion on whether trademarks results in immediate associations withthe services and goods and the company that produces the same. Thismeans that the distinctiveness of a smell or a color should instigatethe brand as the first association that crops up in the minds ofreasonably observant consumers upon smelling them or seeing them.This may be problematic especially in the case of color marks.Indeed, there is immense acknowledgement that color, unlikeconventional marks such as symbols and words, does not constitute asign that identifies the commercial origin.
Onthe same note, color marks are considered secondary to other signs ofa brand.
Registrability of colors and Smells
Asnoted, trademarks form a fundamental aspect of any business entityespecially with regard to the associations that are made betweenparticular signs and the business entities. For a long time, it hasbeen believed that trademarks would only revolve around tangibleitems such as symbols and words. The incorporation of colors andsmells as trademarks, however, has brought up considerablecontroversy. This is especially with regard to their fulfillment ofthe seven criteria outlined by the Sieckmann requirements includingbeing durable, objective, easily accessible, intelligible,self-contained, precise and clear. It is well acknowledged thatsingle undelimited colors may be registrable as long as they fulfillthe substantive and formal requirements pertaining to registration.However, colors and smells face the registration challenge as theyare incapable of being inherently distinctive and, in some instances,may not obtain secondary meaning or distinctiveness via usage. Thismeans that colors would only be registrable only in instances wherethere exists compelling evidence pertaining to acquireddistinctiveness via usage as marketing tools and have been immenselyemployed to cease from being descriptive. It is worth noting that theuse of a single color may be deemed prohibitive as it would restrictother people’s business freedom thereby being against the principleof fair competition. Colors, whether they are combinations or single,may act as trademarks as long as they satisfy two conditions. First,they must show de facto a sign since colors are simple things thatdo not have the capacity to send any meaning. In addition, applicantsmust demarcate the magnitude of protection that is being sought so asto comply with the durability and precision criteria pertaining tothe graphic representation. According to the Windsurfing Chiemseecase, which was the fundamental source for direction pertaining torequirements needed to exhibit factual distinctiveness, trademarksbecome distinctive via their use of as soon as the marks attain thepoint where wares are identified as emanating from a particularbusiness entity and, thereby, differentiating it from wares fromother entities. As much as the use of sounds may be permissible, theuse of the French national anthem would be considered inappropriateas it does not distinguish the products produced in this hotel andothers in the hotel business. Indeed, it is well noted that the useof French national anthem would be harmful to competition.
Theuse of smell also comes up against insurmountable challenges. In linewith the seven criteria for assessing registrability of trademarks,it is evident that scent can never be satisfactorily representedgraphically, whether in combination or separately. Unfortunately, theSieckmann test comes as the only test that is used in determining theapplicability of colors as other techniques such as electronic nose,gas chromatogram and spectrogram are seen as insufficient. On thesame note, it is imperative that the smell is distinctive, where itis required to serve as an indicator of trade origin and not be theresult of the product’s nature. This makes it extremely hard toregister colors and smells as trademarks.
Inthe case of the use of animal images, the main question to considerwould be whether the image is indicative of the commercial source ofthe business. This is one of the most fundamental functions oftrademarks. Nevertheless, the use shape of a cat in the alcoholicdrinks could be considered to have met all conditions provided thatit is customized so as to be unique and to have the capacity todistinguish the company’s products from other business entitieswares. In the case of “Sharethat Friday Feeling”,the slogan seems to meet all criteria regarding the registrability oftrademarks. Not only is it objective and durable but it also would berarely used by other business entities. Indeed, rarely would the samearrangement of words be used, in which case the slogan can be said todistinguish the business entity from others.
Protection of Moral Rights in Chapter IV of the Copyright, Designs and Patents Act, 1988
TheCopyright, Designs and Patents Act (1988) is the reigning copyrightlaw in the United Kingdom giving creators of dramatic, artistic,musical and literary works the right for control of the manners inwhich their material is utilized. These rights entail copying,issuing, lending, renting, adapting, public performance and broadcastof copies of such works in public. More often than not, the creatoris accorded the right to be identified or acknowledged as the author,as well as to object to any distortions carried out on his works.Copyright comes up in instances where organizations or individualscreates works and goes ahead to apply to a work in instances where itis seen as original and shows some level of judgment, skill andlabor. One of the most fundamental achievements of the Copyrights,Designs and Patents Act 1988 was the protection of the moral rightsof the makers of artistic works in chapter IV. Indeed, this actincorporates three categories of moral abuse protection. First, theauthor of an artistic work has the right to be identified ininstances where it is exhibited in any form to the public. Thisidentification must be obvious to first-time viewers. The entitlementis automatically given as long as the author clearly asserts himselfor herself as the literary work’s creator. Secondly, the authorsare entitled to object to any derogatory treatment of theircopyrighted pieces including alteration, addition and adaptationsthat exhibit the author negatively. Thirdly, the authors are entitledto object to any false attribution in instances where other artistsattribute themselves falsely to other artists’ works while takingcredit for the same.
Whilethis protection of moral rights may have come at the right time, itis evident that they are insufficient to offer any protection.Indeed, the UK law seems watered down and is incapable of affordingany protection to the creators of arts. First, the moral rights toobject to derogatory treatment and to credit is not applicable toworks that are made with the aim of reporting current events,dictionaries, yearbooks and magazines. This means that such peoplecan have their works used without necessarily giving them credit, orcan even be used in derogatory manners. On the same note, rights tocredit are only effective in instances where they are assertedthrough phrases such as “All rights reserved”. Further, employedjournalists are not entitled to credit on works that they do in thecourse of employment and can never defend such work’s integrity. Ofparticular note is the fact that the United Kingdom’s law makes itpossible for individuals to waive or give up these right especiallyin the case of freelances, where clients use contracts that demandthat freelancers give up these moral rights. This is aimed atcreating the impression that giving up moral rights is a normalbusiness practice. It is often argued that clients need the waiver soas to alter the work of freelancers. This is not true unless it is inthe editor’s intent to alter the work so that it goes against thejournalist’s honor and reputation. It is imperative that the editorsends edited versions so as to ensure that the clarifications havenot presented untrue information. Such loopholes in the protection ofthe rights of original authors leave them exposed to exploitation oftheir rights without any possibility for legal recourse. Forinstance, there exists no prohibition against making any alterationsto works done in the course of one’s employment even if theoriginal author objects to the same. This underlines the need forrevision of the UK copyright laws.