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What can we register as a trademark – sound, colour and position as a trademark

Recently, the Dutch company Tony's Chocolonely had to change the packaging of one of its chocolates because it was the well-known soft purple colour that we all know as the trademark of Milka chocolate. What is probably less known to most is that this colour is actually registered and protected as a trademark and as such affords its holder exactly the same protection as that afforded by the more common types such as word or figurative trademark.

This opportunity therefore seems ideal for a brief overview of all possible types of trademarks. Both the Industrial Property Act of the Republic of Slovenia (ZIL-1) (Article 42) as well as the Regulation (EU) of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (EUTMR) (Article 4) provide for the same list of signs that may constitute a trade mark, namely that “a trade mark may consist of any signs, in particular words, including surnames and forenames, or of images, letters, numbers, colours, the shape of the goods or of their packaging, or sounds”, provided that it meets certain conditions. Below we present all the possible types of marks, with brief descriptions and examples of more well-known European or Slovenian trademarks of each specific type:

  1. Word mark – a mark consisting exclusively of words, letters, numbers, other standard typographical signs, or a combination thereof – there are many such marks, including Adidas, Philips, Volvo, and others.
  2. Figurative mark – non-standard characters, stylisation or layout, or a graphic feature or a colour, including marks consisting exclusively of figurative elements or a combination of word and figurative elements – a figurative mark is particularly relevant where a particular pictorial element is more important, as well as where we wish to register as a trade mark a particular word which does not have a specific distinctive character in itself or which might otherwise be refused on absolute grounds. An additional graphic element which distinguishes the mark from others may enable such a mark to be registered.
  3. Three-dimensional/shape mark – a mark consisting of a three-dimensional shape, including the container, packaging, the product itself or its appearance – visually, these types of marks are most similar to designs (and in some cases, certain appearances of the product could also be protected by both rights). They are divided into shapes unrelated to goods or services (e.g. Michelin’s mascot), shapes containing the shape of the goods or a part of the goods, and shapes of packaging. For the latter two in particular, examiners are extremely careful to avoid registering as a trade mark a shape that is common to such products. Famous examples of shape marks include the Coca-Cola bottle and the Toblerone chocolate packaging.
  4. A colour mark – as the name suggests, it protects a particular colour as such or a combination of colours – since the number of colours is limited, registering them (especially a single colour) could quickly lead to exhaustion of colours and thus a monopoly over them. Colour marks are therefore registered in exceptional cases, in particular where the applicant can show that, for a particular good/service, consumers associate a colour with a particular manufacturer. Examples of colour marks are the EU-registered purple colour of Milka chocolates and the Slovenian-registered orange colour of Argeta pates and spreads.
  5. Sound mark – a sign consisting solely of a sound or combination of sounds – one of the more famous sounds protected as a trademark is, for example, the famous jingle for Ricola candies. It can be represented by a musical notation or by an accompanying .mp3 recording.
  6. A position mark – a sign consisting of the particular way in which a sign is placed or affixed to a product – a position mark has enormous added value where the sign itself has no particular distinctive character and could be refused as a figurative mark on that ground. If the sign has a special meaning and effect precisely because of how and why it is positioned on a particular product, a position mark may be appropriate. A common example are, for example, certain shapes or patterns placed in a specific location on shoes. Prada, among others, has registered such a position mark.
  7. A pattern mark – a mark made up of a series of elements that are repeated regularly – the better-known brands of this type include, in particular, fashion brands such as Burberry and Louis Vuitton.
  8. Multimedia mark – a sign consisting of a combination of images and sound – the combination of images and sound must be capable of providing a certain distinctive effect and, in particular, of creating the impression of a trade mark among the relevant public and of leaving a lasting impression, thus allowing it to also fulfil one of the basic functions of a trade mark, i.e. to indicate commercial origin.
  9. A motion mark – a sign consisting of movement or change of elements of a sign – unlike multimedia marks, motion marks do not contain sound.
  10. Holographic mark – a mark composed of elements with holographic features – often displayed in the form of a short video so that the holographic elements can be visible. An example of a holographic mark owned by Google LLC can be seen at this link.

We can therefore conclude that many types of marks are available for registration, whereas some might not so clearly fall within the definition of a trademark under ZIL-1 or EUTMR. In any case, the options listed above allow for a considerable degree of creativity in choosing a mark that will be distinctive and recognisable and, as such, will make it easy to distinguish your goods or services from the products of your competition.