Trademarks, generally speaking, can be registered for anything that can be perceived by the senses, is capable of being represented graphically, and is distinctive. The range of things which fall within this definition is very wide, and we have seen more and more unlikely trademarks, including particular colours, place names, and famous sayings – although in each case only for certain uses. In this article we take a look at some of these unlikely marks.
Colour protection wars have been played out in the courts in recent years by big name companies. Cadbury have had a trademark over the particular shade of purple of their packaging, but only in relation to chocolate bars. Cadbury tried to renew the trademark to include a wider range of products (like cake and cholate milk) but were unsuccessful due to stiff opposition from Nestle. Christian Louboutin, the shoe designer, was successful in fending off a challenge from Yves Saint Laurent over his registered trademark for red soled shoes, whilst the mobile network operator Orange battled with Easyjet over a shade of orange in 2004.
More surprisingly, in October this year the estate of the late musician Prince filed a claim to trademark a shade of purple, which if successful, would prevent people from using the colour for film and musical performances in a way that leads the audience to associate it with the singer.
Last year saw Hasbro successfully trademark the very particular smell of Play-Doh in the USA, describing the smell as “sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough.” Whilst it is rare for smells to be successfully trademarked in the US, it is not unheard of (there are currently about 10 active ones). Since the first one was approved in 1990 – a flowery scent used on yarn, successful applications include strawberry scented toothbrushes, bubble gum-scented sandals, and piña colada scented ukuleles. Putting questionable product ideas to one side, it is worth noting that other countries are much stricter than the US, and Hasbro has so far been unsuccessful in trademarking Play-Doh in the UK or EU.
There are no current scent trademarks registered with the EU, Australia has granted only one (for a brand of eucalyptus-scented golf tee), and the UK has two registered smell trademarks – these are dart feathers that smell like bitter beer, and “a floral fragrance/scent reminiscent of roses as applied to tyres” for road vehicles. The main reason that it’s near impossible to trademark smells in the UK and EU is because smell is essentially subjective, which therefore impacts on that trademark’s distinctiveness. The has resulted in brands such as L’Oréal facing serious challenges in preventing the sale of cheaper “smell-alike” products by third parties.
Shapes have been harder to trademark as companies often fail to satisfy the distinctiveness requirement. Nestle lost its battle to trademark the four finger shape of a Kit Kat, although Toblerone does have a trademark over its triangular shape – despite several legal battles with the discount brands. The chocolate company Lindt failed in Germany to trademark its gold-foiled chocolate bunny, the Rubik’s Cube was unable to get EU trademark protection for its shape – paving the way for cheap replicas. Notable brands that have successfully trademarked shapes include Coca-Cola for its curvy glass bottle and Jif lemon juice for its distinctive lemon shaped packaging. The oldest trademark in the world is also a shape – the small red triangle for Bass beer – which having been around since 1777, when trademark registration opened in 1876, it was described as the most recognisable mark in the world.
Perhaps most surprisingly, companies have attempted to trademark the very place in which they are located in order to thwart less scrupulous competitors from trading off their recognised localities. This is difficult to do as EU and UK law generally excludes trademarks using place names which are already famous in themselves. Last month St Andrew’s Links Golf Course was rejected a trademark application for ‘St Andrew’s’ as the court said the town generally was well known for golf, and this included other local courses that laid claim to the heritage. Last month also saw Oxford University put in a trademark application for the word “Oxford” in order to secure exclusive rights to use it on products such as stickers, pencils, DVDs and even Bibles.
Recently news outlets in Kenya have been in uproar over the discovery that Disney have a trademark on the phrase ‘Hakuna Matata’ for their merchandise and have had since the original Lion King film back in 1994. The expression, meaning “no worries”, is a common Swahili phrase used across eastern Africa, and the news of the Disney trademark has led to calls of cultural appropriation. Similar allegations were levelled in Fiji against an American company which had registered a trademark for ‘Bula’ – a Fijian greeting similar to the Hawaiian ‘aloha’. The American company – a bar chain in Florida aiming to capture some of the island vibe – was criticised by Fiji’s attorney-general who said “We would never give permission for anyone – particularly someone outside of Fiji looking to profit – to effectively claim ownership of ‘bula’, a word so deeply-rooted in our national identity, the idea that a single person could control the use of a word so dear to the hearts of Fijians is offensive”.
Common expressions in English are often highly contested too; Paris Hilton and Hallmark cards had a lengthy legal battle over the trademark ‘That’s hot’, 50cent was sued over using the phrase ‘Things fall apart’ for a film, Taylor Swift has trademarks for the lyrics of most of her songs, Mr. T of the A-Team has a trademark for ‘I pity the fool’, and John McEnroe for ‘You cannot be serious!’.
Interestingly, Trump tried to trademark the phrase ‘You’re fired!’ during his time on the American version of The Apprentice, but was unsuccessful due to its similarity to an existing trademark – ‘You’re Hired!’. Amusingly, earlier this year, perhaps ahead of the presidential elections in 2020, a similar phrase was successfully trademarked in the political services category, presumably by a mischievous democrat: “You’re fired 2020”