The Gustatory Modality That Doesn't Register; It's Those D*****D Unusual Words Again

The sense of savor that doesn't register

's friend, merchandise grade trailblazer Ralf Sieckmann, has drawn his attending to In re N. V. Organon, a recent U.S.A. Trademark Trial together with Appeal Board decision of 37 pages which refuses an application to register a sense of savor every bit a U.S.A. merchandise grade - an orangish flavour for antidepressant pills together with tablets. Ralf says:

"Although the TTAB primarily rejected the application on the declaration that the merchandise grade is functional (pages fifteen et seq) together with does non business office every bit a merchandise grade (i.e. every bit a source indicator: pp 31 et seq), it added (pp 36 to 37) that at that spot are also practical reasons why a flavour merchandise grade cannot human activeness every bit a communicating way earlier it touches the tongue. The TTAB explains:

Although our determination is based on the analysis laid forth above, nosotros are non blind to the practical considerations involved inward the registration of flavour marks. Flavor perception is rattling subjective; what applicant considers to hold upward a unique together with distinctive orangish flavour may hold upward considered past times patients every bit only an orangish flavor. Moreover, the Office’s exam of flavour marks, non to cry litigation at the Board, would hold upward rattling problematic.

Further, it is non clear how sense of savor would every bit a practical affair business office every bit a trademark. Influenza A virus subtype H5N1 consumer to a greater extent than oftentimes than non has no access to the product’s flavour prior to purchase. Influenza A virus subtype H5N1 trademark is defined every bit a word, name, symbol, or device that is used past times a individual “to position together with distinguish his or her goods, including a unique product, from those manufactured or sold past times others together with to dot the source of the goods.” Section 45 of the Trademark Act, fifteen U.S.C. §1127. Unlike color, audio together with smell, at that spot to a greater extent than oftentimes than non is no way for consumers routinely to distinguish products past times sampling them earlier they create upward one's heed which ane to purchase. Generally, it would non hold upward expected that prescribed antidepressants would hold upward tasted prior to buy together with then that a consumer, inward conjunction alongside a physician, could distinguish ane antidepressant from some other on the ground of taste. Thus, the consumer, inward making a purchasing determination involving either a prescribed medication or an over-the-counter medication, is unable to distinguish ane pharmaceutical from some other based on flavor. Consequently, it is hard to fathom just how a flavour could business office every bit a source indicator inward the classic sense, different the province of affairs alongside other nontraditional trademarks such every bit color, audio together with smell, to which consumers may hold upward exposed prior to purchase".

Likewise, Organon's parallel BENELUX application 1 018 650 together with CTM application three 065 539 were in conclusion rejected inward 2004 for (inter alia) non acting every bit source indications (in Europe, "lack of distinctiveness"). Influenza A virus subtype H5N1 farther flavour merchandise grade application of Eli Lilly for the flavour of artifical strawberry was here might hold upward of interest: run across footnote 40, which mentions that the utilisation of fruit flavours, including orangish inward bitter drug pills, has been common practise for years.

is sceptical most sense of savor marks. Anyway, he greatly prefers antidepressant Pils to antidepressant pills ...

It's those d*****d unusual words again

Right: Matratzen Concord bears

It's non oftentimes the IPKat misses a trick, but this Practice Amendment Notice from the Great Britain Trade Mark Registry mightiness receive got slipped past times him forever, if it were non for its timely appearance inward the World Trademark Law Report. It goes something similar this:

"Practice Amendment Notice PAN 12/06 Issued thirteen June 2006

This uncovering affects Examination Practice inward relation to Non-English words.

Paragraphs 27 to 27.4 of the Work Manual receive got been replaced past times the text below. This amendment represents a redraft of the electrical current Registry practice.

27 Registrability of non-English words

These guidelines dot how the Registrar is probable to answer to applications to register non-English words every bit merchandise marks where, if words alongside the same important were applied for inward English, the application would hold upward discipline to an objection on the grounds that the words are descriptive and/or non-distinctive.

Following the European Court of Justice’s (ECJ) judgment inward instance C-421/04, Matratzen Concord AG v Hukla Deutschland SA, at that spot are no grounds for refusing registration of merchandise marks on the ground that they are relevantly descriptive or non-distinctive inward a linguistic communication which is unlikely to hold upward understood past times the relevant merchandise inward the Great Britain or past times the relevant average Great Britain consumer of the goods/services inward question.

Consequently, the registrar volition only object to the registration of give-and-take marks which are probable to hold upward recognised every bit a description of a feature of the goods or services (or otherwise hold upward descriptive of the goods/services) inward the application.

The relevant merchandise inward the Great Britain consists of those inward the Great Britain who merchandise inward the goods or services inward question. This is most probable to hold upward relevant where the goods are traded inward past times specialists. For example, a chemist may recognise the descriptive important of a Latin cry fifty-fifty though an average consumer of pharmaceuticals may not. Similarly, a trader inward wines is probable to receive got a ameliorate agreement of French vino descriptions than the average terminate consumer of those goods.

27.1 The Most Commonly Understood European Languages

In general, the most widely understood European languages inward the Great Britain are French, Spanish, Italian together with German. The bulk of Great Britain consumers cannot hold upward assumed to hold upward fluent inward whatever of these languages, but most of them volition receive got an appreciation of some of the to a greater extent than mutual words from these languages, specially mutual French words. So it may hold upward assumed that the important of ‘Biscuit pour Chien’ (dog biscuits) volition hold upward known to the average Great Britain client for Canis familiaris biscuits. Similarly, it may hold upward assumed that traders inward and/or average Great Britain consumers of cosmetics (who volition hold upward accustomed to seeing French descriptions on the packaging of cosmetics) volition know the important of ‘lait’ (milk) together with volition hold upward able to decipher the important of ‘Lait hydratant’ every bit beingness moisturising milk (or similar).

27.2 Non English linguistic communication Descriptions which are most probable to hold upward Understood

Again inward general, the average Great Britain consumer is far to a greater extent than probable to hold upward familiar alongside the non-English cry of a production or service, or the local bespeak its geographical origin, than he is she is alongside the non-English words which depict other characteristics of the production or service. For example, the average English linguistic communication speaking consumer of vino would know that ‘Bourgogne’ is the French give-and-take for the share known inward the Great Britain every bit ‘Burgundy’ together with would also hold upward probable to know that ‘vin rouge’ way ‘red wine.’ Similarly, the average consumer of olive petroleum is probable to know that ‘Toscano’ is the Italian give-and-take for the share known inward the Great Britain every bit Tuscany. Consequently, these names are non registrable for vino together with olive oil, respectively.

27.3 Non-English Words which resemble English linguistic communication Descriptive Words

The to a greater extent than closely a non-English descriptive give-and-take resembles its English linguistic communication equivalent, the to a greater extent than probable it is that its descriptive significance volition hold upward understood past times the consumer. So, for example, the Italian words ‘Caffe Fresco’ should hold upward rejected every bit a merchandise grade for java because the average Great Britain consumer of java would hold upward probable to run across that it only way ‘fresh coffee’.

27.4 Further Considerations which apply to Non-English Descriptive Marks for Services

Section 3(1)(c) is directed at signs which may serve, inward trade, every bit designations of goods or services. Goods are known to movement from ane territory to another. Non-English words are hence inherently to a greater extent than probable to hold upward taken every bit descriptions used inward the Great Britain inward relation to imported goods than is the instance alongside most services. Consequently, alongside surely exceptions, such every bit travel, carry together with linguistic communication services, non-English words may hold upward registrable for some services fifty-fifty where the important of the words would hold upward apparent to the relevant average Great Britain consumer. For example, the utilisation of ‘Pret a Manger’ (ready to eat) inward relation to a catering service provided inward the Great Britain is unlikely to hold upward regarded past times the merchandise every bit only descriptive use, fifty-fifty if they know what the French words mean.

27.5 Goods or Services aimed at Minority Groups

Where past times their rattling nature, the average consumer of terminate user of the goods inward the application is far to a greater extent than probable than the average Great Britain consumer to empathize the linguistic communication of the mark, this should hold upward taken into concern human relationship inward determining whether the grade is caught past times Section 3(1)(c) of the Act.

For example, the grade خ IMAR (an Standard Arabic give-and-take – YASHMAK is the English) would non hold upward registrable for yashmaks inward Class 25 because this would hold upward a normal way for traders of these goods to marketplace them because they are primarily used past times the Standard Arabic speaking community. The same would apply if the application includes to a greater extent than full general descriptions of the same goods, such every bit ‘clothing.’ This variety of dot is most probable to arise inward relation to marks for foodstuffs together with drinks inward Classes 29-32 together with habiliment inward Class 25.

27.6 Non-English Words which receive got larn customary inward the Current Language or inward the bona fide together with Established Practices of the Trade.

Non-English words which receive got larn generic inward the merchandise inward the goods or services (by customers or traders) are excluded from registration nether Section 3(1)(d) of the Act. So the High German give-and-take ‘auto’ is non registrable for motor cars of their parts together with fittings, or related services. Nor is the Italian give-and-take ‘panini’ for sandwiches.

27.7 Non-English words which are Devoid of whatever Distinctive Character

The Welsh linguistic communication has equal condition to English linguistic communication inward Wales. For the purposes of Section 3(1) of the Act, merchandise marks consisting of words inward the Welsh linguistic communication volition hold upward treated inward the same way every bit merchandise marks consisting of the equivalent English linguistic communication words. Save for the circumstances described inward the paragraph above, it should rarely hold upward necessary to heighten an objection to a non-English give-and-take nether Section 3(1)(b) alone.

Prejudice dot 1: admires the Trade Mark Registry's penchant for providing apt examples for the create goodness of its examiners (and applicants). But he wonders whether a Welsh linguistic communication give-and-take mightiness scrape through to registration where (i) although it is totally descriptive, it is non a give-and-take borrowed from English linguistic communication but a genuine Welsh give-and-take together with (ii) the goods or services for which registration is sought are targeted at English-speakers only.

Prejudice dot 2: Merpel wonders why people ever proceed most Canis familiaris biscuits (biscuits pour chien) but brand together with then niggling fuss of truthful cat biscuits (biscuits pour chat) ...