Sounds, smells and colours

This page considers sounds, smells and colours as trademarks.

It covers -

• introduction
• sounds
• smells
• colours
• Australia

     introduction

Brand owners have increasingly sought to register sounds, smells and colours as trademarks.

The essential challenge is the task of proving that the particular sound (or scent of colour) is unique and is closely associated with the brand. Another challenge, arguably less difficult, is the registration of the mark, with for example disagreement in academic and industry circles about how to record a smell and thence to deal with questions of infringement.

It is important to note that a particular aural, olfactory or colour mark does not cover all possible uses. A trademark might thus be issued for use of a specific colour (eg identified on the Pantone scale) in relation to a particular product - protected under a discrete trademark class - rather than for every use of that colour. People in the US are accordingly free to decorate their nails (or poodles) and birthday cakes using a particular shade of pink without infringing the 'pink batts' colour mark.

     sounds

Sound marks emerged in the 1950s but registration really 'took off' from the 1970s, driven in large part by emulation and by increasing use of digital technologies. Much registration has been 'backward', with corporate owners seeking sound trade mark protection for sounds - such as the roar of the MGM lion or 20th Century Fox therme - in use over the preceding 50 years.

Examples include -

• US broadcaster NBC - sound of the chime used to identify a station break (1971, US Reg. No 0916552)
• Time Warner - "Merrie Melodies Theme" (2001, US Reg. No 2,473,248)
• New York Stock Exchange - sound of its closing bell ("a brass bell tuned to the pitch D... struck nine times at a brisk tempo")
• Edgar Rice Burroughs, Inc.- the "famous Tarzan yell" (US Reg. No 2,210,506)
• American Airlines - 'ding' flight attendant tone
• Deutsche Telekom - "five note musical score" (US Reg. No 2,459,405; New Zealand Reg. No 649629)
• Harlem Globetrotters - basketball team's 'Sweet Georgia Brown' theme
• AT&T - spoken letters AT&T with a distinctive musical flourish in background
• Intel - 'five-tone' sound registered in US, Australia and New Zealand
• Pillsbury - sound of Pillsbury Doughboy's giggle
• RKO Pictures - image and sound regarding 'RKO tower' transmitting Morse-code like signal.

In Australia there had been 59 applications for registration of an aural mark as of June 2006, with 25 (including the 'Dolmio waltz' for pasta sauce and the spoken words "Ah McCain" followed by a 'ping') being successful.

Critics have argued that aural marks are problematic. One argument is simply that it is inappropriate to trademark a sound. Another centres on the perceived difficulty of adequately describing a sound mark. Some registers seek a notation of musical notes, tones and words (the "famous Tarzan yell" is for example identified through traditional musical notation of the notes and pitches"). Other registries allow an 'image' of the mark, ie inclusion of a sound recording.

Applications to register some sounds have proved to be contentious, whether because of questions about distinctiveness and close association (the criteria discussed earlier in this profile) or because of perceived reach. Motorcycle manufacturer Harley-Davidson, for example, sought a US trademark for the noise of its "45 degree V-twin single crankpin motor". A Honda spokesperson commented that "It's very difficult to imagine a world where the sound of a running engine is an exclusive property right", particularly in a world where many noises sound the same.

Introductions to the literature are provided by Kevin McCormick's 2006 '"Ding" You Are Now Free to Register that Sound' in 96 The Trademark Reporter 1101, Michael Sapherstein's 1998 'The Trademark Registrability of the Harley-Davidson Roar: A Multimedia Analysis' in 1998 Intellectual Property & Technology Forum.

     smells

In the US scents may be trademarked if they do not serve a functional purpose. In 1990 for example a court held that a Californian company could register a plumeria scent as a trademark for its sewing thread and embroidery yarn (US Reg. No 1,639,128, subsequently abandoned).

Personal fragrances (eg the scent of a perfume) are considered functional - without separation of the product and the mark - and thus cannot be registered.

Practice in Europe has varied. L'Oreal successfully claimed trademark infringement in France regarding the smell of one of its perfumes in a dispute with a manufacturer of 'small-alikes'. That decision was reversed by a superior court. A trademark in the smell of perfume has however reportedly been accepted by courts in the Netherlands (in Lancôme Parfums et Beauté et Cie v Kecofa, 2004). The UK trademark register and UK courts have not accepted perfume scent trademarks, as distinct from trademark protection for the name and packaging of the perfume.

An application by Chanel for a Chanel No 5 olfactory mark - described as

a scent of aldehydic-floral fragrance product, with an aldehydic top note from aldehydes, bergamont, lemon and neroli; an elegant floral middle note, from jasmine, rose, lily of the valley, orris and ylang-ylang; and a sensual feminine note from sandal, cedar, vanilla, amber, civet and musk.

was thus unsuccessful. The UK has however approvided olfactory marks: the first successful application was by Sumitomo Rubber for "a floral fragrance/smell reminiscent of roses as applied to tyres".

Other examples include the -

• 'strong smell of bitter beer' applied to flights for darts
• 'smell, aroma or essence of cinnamon' for furniture and parts and fittings
• 'smell of fresh cut grass' for tennis balls.

One might ask whether smell trade marks are more intriguing than practical. Do you sniff your tyres for the scent of crushed American Beauty rose petals, rather than relyiong on a logo on the outsed of the rubber.

As with sounds there has been disagreement about description of smells in trademark registers ('elegant top note', 'sensual feminine note' etc). We are thus likely to see increasig emphasis on mechanisms for identification such as gas chromatography, high-performance liquid chromatography (HPLC) and mass spectrometry (MS).

Among the literature see Helen Burton's 1995 'The UK Trade Marks Act 1994: An Invitation to an Olfactory Occasion?”' in EIPR, Benson, Christopher Benson's 2001 'Can a smell be registered as a trade mark?' in IHL and Peter Turner-Kerr's 2001 'Trade Marks: Application to the OHIM for registration of an olfactory mark – Case Comment' in EIPR.

     colours

Australian and overseas entities have sought to trademark colours, including purple for chocolate and orange for champagne.

The US Supreme Court held in Qualitex Co. v Jacobson Products (1995) that colour per se was registrable as a federal trademark.

In the US fibreglass group Owens-Corning was initially unsuccessful in seeking to trademark the colour pink in association with its pink insulation batts. It had spent heavily on promotion (including licensing of the Pink Panther cartoon character) and was able to demonstrate that consumers associated the colour with its product. Owens-Corning appealed rejection of decision and was eventually successful in registering the colour in relation to the particular product.

In action since the Qualitex case the Court of Justice of the European Communities noted that although there may be some media on which it is possible to record a colour in permanent form, there are others (such as paper) where the shade of the color cannot be protected from the effects of time.

     Australia

In Australia attention has focused on the 2006 Federal Court decision in Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 4), a dispute between chocolate makers about use of the colour purple. Justice Heerey commented (consistent with the decision in Campomar v Sociedad Limitadav Nike International) that

Cadbury does not own the colour purple and does not have an exclusive reputation in purple in connection with chocolate in Australia. Darrell Lea is entitled to use purple, or any other colour, as long as it does not convey to the reasonable consumer the idea that it or its products have some connection with Cadbury.

He noted that Cadbury never uses the colour purple in isolation as an indicium of trade; its products always bear the Cadbury name in a distinctive script and its use of purple is seen by consumers as inextricably bound up with the Cadbury name in its distinctive script.

In contrast the 2003 decision by Mansfield J in the Federal Court held that Philmac, a maker of water industry equipment, could register terracotta as a colour mark for non-metallic rigid irrigation pipe fittings because it was capable of distinguishing the company's products. Philmac had appealed to the court after the Registrar of Trade Marks rejected the application.

Mansfield laid down four conditions under which a colour mark can be inherently distinctive -

• the mark cannot be descriptive (ie cannot evoke a state or condition)
• the colour cannot be functional
• the colour cannot be the result of the normal manufacturing process
• the colour cannot be used in an industry where colour is an important element of competition within the industry

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