UK: TRADE MARK TRAVAILS. - The Trade Marks Act has opened the way for protection of colour, shape and smell in trade marks. But British companies should recognise more fundamental changes, says Alan Mitchell.

Last Updated: 31 Aug 2010

The Trade Marks Act has opened the way for protection of colour, shape and smell in trade marks. But British companies should recognise more fundamental changes, says Alan Mitchell.

A tyre smelling of roses, two taps on the side of the nose with the index finger, that irritating jingle from the Direct Line ads - these are just some of the things that companies have sought to register as trade marks since the Trade Marks Act came into effect at the end of October last year.

Over a year later, the Trade Mark Registry is receiving around 5,000 applications a month (45% more than before the Act was introduced), a level of interest prompted in part by the new law's broad remit. Trade marks are now protected not only in the 'same' category of goods but also in 'similar' ones. At the same time, the definition of a trade mark has been extended from its core area of names and words to include anything capable of graphical representation. This has been interpreted to include packaging and - to the surprise of many European trade-mark experts - more esoteric items such as gestures and smells.

In September, Coca-Cola's fluted bottle - an undisputed design icon - became the first three-dimensional shape to win approval. Others pending include the Malibu bottle, the shape of the Toblerone bar, a new Pepsi bottle and all manner of cosmetics and perfume packaging. SmithKline Beecham is registering a toothpaste in the shape of a molar, Duracell its battery packaging and British Gas a flame coming out of a thumb. Colour protection is another hive of activity; a maker of photographic film is seeking to register the colour yellow, a chocolate-maker purple and a mobile phone network orange.

Yet, a year into its operation, it's still too early to assess the Act's full impact. Brand owners who fought unsuccessfully last year to amend the legislation claim the Act is inadequate on three counts. It takes too long (often two years) to register even an unopposed mark; it does not allow amendments to existing marks; and it fails to provide protection against attempts to borrow the overall impression created by a product's packaging.

Though some marketers are deliberately using the Act's scope to dream up outlandish new designs (which could earn protection from birth), most companies are simply safeguarding existing assets. And while the exotica of rose-smelling tyres draws the attention of the media, '98% of the real commercial interest lies in words and names', according to Richard Abnett, a partner at trade-mark firm Reddie & Grose. The next largest area of interest is packaging, says John Slater of Marks & Clerk, where marketers hope the Act will help them fend off so-called lookalikes.

Though so far there have been no landmark court cases prompted by the Act, there are straws in the wind. The extension of protection from 'same' to 'similar' classes of goods means that it's almost certain that a company seeking to register a property in one category could find itself facing a challenge from an unexpected quarter - in much the same way that Channel Tunnel operator Eurostar has been plagued by a tiny French courier firm's defence of its name, Eurostart. It seems that some marketers are actively seeking to exploit such possibilities. 'When they look you in the eye and say, yes, they do intend to trade in all these classes, it's clear that some of them are pushing at the edge of what's permissible,' says Alison Brimelow, head of the Trade Mark Registry. 'We are watching it very closely.' Companies seem to be far more concerned by the issue of disclosure; to register an existing property the applicant must provide evidence that it has proved itself distinctive in the marketplace. Some companies have been dismayed to discover that sensitive information - such as sales and advertising spends - is regarded by the Registry as being in the public domain. Brimelow accepts that there might well be a problem. But, she adds, the trade-off between winning monopoly rights and making disclosures 'lies at the heart of the intellectual property bargain'.

The most unsettling change, however, is the UK's shift from a 'first to use' approach to protection to a 'first to file'. That means that applicants with long-standing but unregistered properties could find their right to use them challenged by rivals who had just happened to register first.

The forthcoming Community Trade Mark, which comes into force on 1 January 1996, will further compound the danger. It allows companies to make just one application to protect a brand across 15 countries - with the result that a challenge could then come from anywhere in the EU. Its arrival on top of the UK Act means that companies now have a strong incentive to file. Yet, warns Abnett, 'much of British industry still hasn't fully realised there are some fairly fundamental changes taking place'.

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