In a recent blog post, we noted that the new Bill C-56 would significantly expand the scope of a registrable trade-mark in Canada. If passed, the list of items that could potentially be registered a trade-mark would include "a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign."
However, the nature of the evidence required to prove registrability is deliberately left vague in the proposed revisions, and a revised s. 32 would allow the Registrar to ask for any evidence deemed necessary to establish that a trade-mark is distinctive at the date of the filing of the application for registration. While Canadian standards would, of course, have to be developed, a recent precedential decision of the United States Patent and Trademark Office's Trademark Trial and Appeal Board (TTAB) is of interest, as an illustration of the difficulties in proving the requisite acquired distinctiveness to register a scent or flavour trademark.
On February 25, 2013, in its decision in Re Pohl-Boskamp GmbH & Co. KG, the TTAB upheld the Examiner's initial decisions to reject applications to register "a distinctive flavour of peppermint" and a "peppermint scent" as trademarks for use in association with pharmaceutical formulations of nitroglycerin. The peppermint flavour application was rejected on the grounds that the flavour served a functional purpose. Both applications were rejected on the grounds that the claimed flavour and the claimed scent failed to function as a trademark.
U.S. jurisprudence has held that a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. The reason for refusing trademark protection for functional features is to prevent trademark law from inhibiting legitimate competition by allowing a producer to control a useful product feature.
In this case, the evidence included an issued U.S. patent which claimed that menthol-containing substances (which include peppermint) not only reduced the necessary dosage of nitroglycerin required to be effective, but also reduced the headache and fainting sides effects of the drug. Accordingly, the TTAB determined that peppermint oil could be used as a therapeutic agent.
Despite the fact that the peppermint oil in the applicant's product was expressly declared to be a "non-medicinal" or "inactive" ingredient, the TTAB rejected the application on the grounds of functionality, reasoning that "to allow applicant the exclusive right to market nitroglycerine formulations having the flavor of peppermint oil would impermissibly prevent the future use of therapeutic peppermint oil by others in applicant's field."
Distinctiveness - Failure to Function as a Mark
Each application was also refused on the basis that the flavour and scent did not serve as a trademark. The TTAB confirmed that neither flavours nor scents can be considered inherently distinctive, because each of those (like colour) is generally seen as a characteristic of the relevant goods, rather than as a trademark. Therefore, "a substantial showing of acquired distinctiveness is required to demonstrate that a flavor or scent functions as a mark".
In considering whether a flavour or scent should be registered as a trademark, the critical question becomes whether the flavor or scent would be perceived as source indicators or merely physical attributes of the relevant product. The evidence required to prove sufficient acquired distinctiveness in relation to scents and flavours is significant, and the TTAB noted that an "applicant's burden of showing acquired distinctiveness is a heavy one".
In this case, the applicant's product had been marketed and used in the United States for over two decades, on a "substantially exclusive" basis. However, the applicant was not the only user of a peppermint flavour and scent in association with nitroglycerin pharmaceuticals. Moreover, several other heart-related pharmaceutical products (such as other angina remedies) also used a peppermint flavour and scent.
While the applicant submitted the testimonials of 23 physicians and pharmacists which appeared to support the distinctive nature of the flavour and scent of the applicant's product, the Board assigned such affidavits little weight because the wording in each declaration was essentially identical, and such statements are less persuasive than those in the declarant's own words. Moreover, in the TTAB's view, the declarations stopped short of answering a key question: if the declarant encountered the scent of peppermint in association with a different heart remedy, would he or she associate it with the applicant?
Noting that "consumers are not predisposed to equate either flavour or scent with the source of the product ingested", the TTAB found that the applicant had not met the heavy burden required to prove acquired distinctiveness, and rejected the scent and flavour trademark applications.
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