Protection of Sensory Marks and the Possible Impact of the Graphic Representation Requirement Removal on their Registrability

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Title: Protection of Sensory Marks and the Possible Impact of the Graphic Representation Requirement Removal on their Registrability
Author: Jelenciakova, Katarina
Other contributor: Helsingin yliopisto, Oikeustieteellinen tiedekunta
University of Helsinki, Faculty of Law
Helsingfors universitet, Juridiska fakulteten
Publisher: Helsingfors universitet
Date: 2015
Language: eng
Thesis level: master's thesis
Discipline: Kauppaoikeus
Commercial law
Abstract: The thesis discusses the trade mark protection of scents, colours, sounds, touch and tastes. Commercial use of human senses as brands allows the traders to benefit from their stimuli on consumers. Since the technological progress allows the traders to use the senses as conveyors of their business ideas a demand for trade mark protection of sensory marks has formed. Prior to satisfying the demand on the side of proprietors, the lawmakers have to take into account the interests of the competitors and consumers as well. Therefore, the legislative solutions have to bear in mind and balance between all three positions and ensure free competition and prevent protection of such marks that give unjustified advantage to one entrepreneur. Moreover, the trade mark protection of senses gives rise to many discussions questioning their eligibility of being graphically representable or having a distinctive character. The EU legislation does not expressly exclude trade mark protection of sensory marks, but the case law hints that the registration is not granted without a (not always successful) struggle. The hypothesis was formulated as follows: Sensory marks in general can enjoy the same trade mark protection in the EU as other more traditional trade marks pursuant to fulfilment of the strict registration criteria. However, for some of the sensory marks – scent, touch and taste marks the requirements imposed by the current EU legislation and case law represent an insurmountable obstacle. The proposed reform of the EU legislation can facilitate the registration of the sensory marks to a certain extent, but it will not eliminate all the issues the respective sensory mark has to overcome. The research questions that were discussed in the thesis are the following: (i) Are sensory marks protectable under EU law? (a) Are they registrable? (b) What are the issues? (ii) Is having a requirement of graphic representation hindering the registration of sensory marks? The thesis is divided into six main chapters, where the first focuses on what can be protected as the as a trade mark on the EU level (CTM) and across the Member States. The chapter further discusses the exclusive character and functions of trade marks and potential US influence alongside with general issues relating to registering sensory marks in the USA and in the EU. Each of the remaining five chapters focuses on a type of mark, which can be perceived by using one of five human senses – scent, sight, hearing, taste and touch. Each of the ‘sense chapters’ encompasses an overview of the legislation and most important case law in the field of trade mark law relating to registration of the respective sense. Special attention is being paid to EU and US legislation and case law relating to registration of the respective sense at OHIM, USPTO and national register authorities. In the following subchapters, the attention is drawn to the practical issues arising from the endeavour to protect sensory marks and registration thereof. The focus is aimed on the main issues the applicant has to overcome when claiming trade mark registration of a sensory mark resulting from the requirements of law and the nature of the respective sense. Subsequently, each ‘sense chapter’ further elaborates how the proposed changes in the EU legislation could affect registrability and protection of the respective sensory mark in the EU. The focal aim is to assess the potential impact of the proposed abandonment of the graphic representation requirement on the registration process and popularity of sensory marks applications. The last chapter is dedicated for conclusions summarizing whether sensory marks are protectable in the EU, whether the trade mark reform would affect their position and whether the reform would in fact mean converging of the EU and US approaches on the matter.

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