Non-traditional Trademarks

Oct 2, 2020 | English Blog

Our legislation establishes what signs may constitute a trademark, and says: marks may include among others, a word or set of words, slogans and advertising slogans, letters, numbers, monograms, figures, portraits, labels, badges, prints, cartoons, borders, lines and stripes, and combinations and arrangements of colors, sounds and other perceptible signs such as odors. They may also consist of form, presentation or packaging of the products, their packaging or wrapping, the means or places of sale of products and services. (Article 3 of Law no. 380 Law on Trademarks and other Distinctive Signs)

Those peculiar signs such as sounds and smells are recognized as non-traditional marks, as it well says those are not the kind of mark that are commonly registered, even though they are subject to protection.

Non-traditional marks, like common marks, should be a source of identification of products and services from similar marks on the market. Therefore, they must meet the same requirements, having distinctiveness and novelty, and also not falling into the grounds of non-registrability by a third earlier right that could cause a risk of confusion or association.

These types of marks are the ones that uniquely evoke or remind us of a product, they are the ones that are identifiable through the senses such as taste, smell and hearing. This type of mark can be more complicated when registering because, as I said before, it must meet the same requirements as a common mark, for example, in taste marks it is difficult to create a particular taste that the consumer does remember a particular product without thinking of others similar or of the same species.

Smell marks can be less difficult to register because they may well reproduce odors that are not precisely the smell of the product itself, the mistake that some companies commonly make is wanting to register the smell of the product itself as a trademark, which could result in being an odor not so particular or not so different from other odors of similar products, generally happens in perfume marks, on the other hand when the odor is something other than the common odor of the product it can be registered.

With sound marks it is intended that the consumer when hearing that sound, goes back to thinking about the particular product or service. A sound mark consists of a sound or a combination of sounds with sufficient distinction to be picked up by the ear. But these marks also have their level of difficulty when it comes to registering.

As technology advances, companies look for all possible ways to innovate and stand out from their competitors, although it is true that tools such as non-traditional trademark registration are already in place to protect all those efforts of innovation and creation of products and services, there are still many difficulties to obtain their protection as trademarks, however, companies do not see it as an obstacle but as a way to continue improving and thus continue to innovate and create, which is the main object of Intellectual Property.