When we think of a trademark in our daily lives, we often associate it to a set of conventional marks, for example, letters, numerals, words, symbols, or combinations of one or more of these elements.

According to article 2 of Annex III of the Bangui Agreement (2015), a mark may consist of:

(1)  Any "visible or audible sign used or intended to be used and capable of distinguishing the goods or services of any natural or legal person shall be considered a trademark or service mark".

(2)  Collective and (3)  certification marks are also available. The former consisting of "the mark of products or services whose conditions of use are laid down in rules approved by the competent authority and which may be used only by public enterprises, unions or groups of unions, associations, groups of producers, manufacturers, craftsmen or tradesmen" as long as they are officially recognized and have legal personality; the latest to be "applied to a product or service which by nature possesses the properties, qualities or characteristics specified in its regulations."

Complementing the information given above, no. 1 of article 2 enumerates the elements that may constitute a registrable sign, which are the following:

(a)  denominations in all forms such as words, combinations of words, surnames in and of themselves or in a distinctive form, special, arbitrary, or fanciful designations, letters, abbreviations, and numerals.

E.g., OAPI word trademark no. 66105 "PUMA" in classes 18, 25 and 28, of PUMA SE.

(b)  figurative signs such as drawings, labels, seals, selvedges, reliefs, holograms, logos, synthesized images; shapes, especially those of the product or its packaging or those characteristics of the service, and arrangements, combinations and shades of colors.

E.g., figurative IR designated in OAPI no. 1343965  in classes 3, 18 and 25, of PUMA SE.

Additionally, it is also possible to consider elements as such:

(c)  audible signs such as sounds and musical phrases.

(d)  audiovisual signs; and

(e)  series of signs.

When we think again about what type of trademark are we surrounded with, we will be surprised how non-conventional marks can impact the consumer experience.

For example, creating a signature scent that is associated with a brand will consequently make the emotional connection with consumers stronger, thus becoming part of the company's brand identity.

In fact, a study by the Sense of Smell Institute indicates that 75% of all emotions generated every day are due to smell, and because of this, we are 100 times more likely to remember something we smell over something we see, hear, or touch. Additional scent marketing research shows that there is a 40% improvement in mood after being exposed to pleasant scents.

Although this particular category is not yet recognized by the Bangui Agreement, certain categories of non-conventional trademarks have become more widely accepted in recent times due to legislative changes expanding the definition of a trademark.

IP law update

These long-anticipated amendments to the New Act of the Bangui agreement (2015) went into force in January 2022. Along with other revisions, this update has broadened the definition of trademark.

The African Organization for Intellectual Property announced that the new IP laws concerning trademarks, geographic indications, utility models, and industrial designs entered into force on January 1, 2022.

The amendments have been ratified by the OAPI member states, which are Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Republic of Congo, Ivory Coast, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Mali, Mauritania, Niger, Senegal, Togo, and Comoros.

Firstly, Article 2 c) and d) expand the previous definition of a trademark to also include sound and audiovisual trademarks. The addition of these points is particularly relevant as they stand as a milestone for the registrable non-conventional trademarks in OAPI. Additionally, collective and certification trademarks are now provisioned (Article 42 et seq.).

Non-conventional trademarks

A non-conventional trademark, also known as a non-traditional trademark, may be considered a new genre of trademark because it is based on appearance, shape, sound, smell, taste, and texture. The most important factor when it comes to conventional or non-conventional trademarks is that the mark is distinguishable.

Broadly speaking, non-conventional trademarks may be challenging to be registered, as the analysis and examination of their substantial distinctive character tends to be more exiguous to the PTO's examiners but, on the other hand they provide a sui generis and unique identification of the commercial origin of a product and/or service, maximising the demarcation of an applicant in the commercial activities in comparison to others.

Detailed analysis

As previously commented, non-conventional trademarks can be both (i) tangible signs like colors, shapes, moving images, holograms, positions or (ii) intangible signs like sounds, scent, taste, and texture, which identify the product or service.

Relying on the provisions of OAPI's Trademark Law (Annex III of the Bangui Agreement), our analysis of the OAPI's admissibility of this new genre of trademark is as follows:

  • Colour

A single color does not qualify for protection as a trademark. However, colour combinations, shades of colours, colours combined with graphics, words, or other elements in a distinctive or peculiar manner qualify as a mark for protection (Article 2, no. 1, b)).

  • Holograms, 3D, motion and position

OAPI's trademark law explicitly provides for the possibility of registration of holograms (i.e., a three-dimensional image formed by the interference of light beams from a laser or other coherent light source) as marks, given that they have a substantial distinctive character (Article 2, no. 1, b)).

Notwithstanding the non-existence of a direct reference in this relevant article, 3D  (three-dimensional forms), motion (three-dimensional or moving marks that consist of a combination of moving visuals with audio) and position  marks (the specific way in which the mark is placed on or affixed to the product), in our view, may be protected as the items: "figurative signs such as drawings, labels, seals, selvedges, reliefs, holograms, logos, synthesized images; shapes, especially those of the product or its packaging or those characteristics of the service; and arrangements, combinations and shades of colors" are wide enough to allow the insertion of these non-traditional marks within the scope of protection. Additionally, in what concerns motion trademarks, these may also fall under Article 139, no. 1, d), which directly refers to audiovisual signs.

  • Sound

Sounds may be protected as trademarks if they can distinguish a company's products or services from those of others (Article 2, no. 1, c)). Even though the IP Law does not specifically state the need to file a graphic representation and the musical phrases of the sounds that enter the composition of the trademark at stake, this may be deemed as implied in article's 9, no. 2, c) in the expression "reproduction of the mark", while referring to one of the necessary elements to file an application.

  • Touch, scent and flavor

Notwithstanding the breadth of Article 2, which refers to the signs recognized as marks, there is no provision for the registrability of product texture. By enumerating the elements that may constitute a registrable sign, Article 2, no. 1, lines a)b)c) d) and e), as per our analysis, narrow the scope of possibilities and discards touch trademarks from the non-conventional trademarks passible of protection in OAPI. The same terms apply to scents and flavour marks, which are not recognized as registrable signs.

Conclusion

It is important to note that, as non-conventional trademarks have recently been included in the Trademark Law in January 2022, there are no examples of successful registrations yet. As the time frame from filing of a mark application until registration normally falls into 12 months, an update of this matter is expected to occur by the end of the current year. It will also be interesting to learn how the PTO will respond to these new applications and whether the substantial examination period will be approximately the same as for the traditional marks.

The additions brought by the revision of the Bangui Agreement are undoubtedly a starting point for the filing of non-conventional trademark applications in OAPI. This gives IP holders the opportunity to register this new genre of trademarks, allowing them to take their IP portfolio one step further in the region.

Originally published by IP STARS

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.