By Ananyaa Banerjee and Sandhya A. Parimala
Taste, like smell, can have a lasting impact on the memory and recall of any consumer. Therefore, the taste of a product (edible or non-edible) may create a secondary connection with the brand. However, for a taste/flavor to be protected as a trade mark, the same cannot be a functional feature of the product and there may be challenges with respect to representation of such marks.
Position of Taste Marks in different Jurisdictions
Position in the European Union
In the European Union, previously according to Article 2 of the EU Directive 89/104/EEC[1], the capability of representing a trade mark graphically was an important factor in determining the registrability of a trade mark.
However, it is difficult to represent a taste mark graphically either through words or through images etc.
However, with the implementation of Regulation (EU) 2017/1001 on the European Union Trade Mark, requirement of graphical representation was removed. Article 4 EUTMR[2] mandates that a trade mark should be capable of distinguishing the goods or services of one undertaking from others and should be capable of representing the trade mark on the Register of European Union in a manner which enables the authorities and public to determine the clear and precise subject matter of the protection afforded to its proprietor. This establishes that a trade mark should be capable of representing in any manner which is clear and precise.
However, in the case of taste marks, it is practically not possible to represent a taste mark by complying with the requirements specified in Article 4 EUTMR.[3]
Further, the Applicant cannot even file a sample of the taste with the EUIPO as according to Article 3(9) EUTMIR[4], filing of samples shall not be considered as proper representation. It is pertinent to note that unlike colour and sound marks, taste marks are not explicitly included in the non-exhaustive list of types of mark provided by Article 3(3) EUTMIR.[5] Furthermore, currently there is no technology that could enable the representation of a taste mark on the Register in a legally acceptable manner. Thus, an application for a taste mark would most probably be rejected under Article 7(1)(a) EUTMR.[6]
Position in the United States
In United States, the taste of a product may be registrable, provided it should be used in a nonfunctional manner. If a taste of a product is not functional in nature then the same may be registered, provided it has acquired distinctiveness.[7] In the case of In Re Pohl-Boskamp GmbH & Co[8], it was held that the use of peppermint flavor by others in the relevant marketplace tends to show that such flavors are more likely to be perceived as attributes of ingestible products than as indicators. Therefore, the peppermint flavor mark for “pharmaceutical formulations of nitroglycerin” failed to function as a mark. A US court has ruled, in the case of New York Pizzeria vs. Ravinder Syal, that a restaurant could not claim trade mark rights over the taste of one of its pizzas.
Further, USPTO requires the applicant who is registering the flavor mark to substantially show the acquired distinctiveness of the mark, since it is confusing as to how a taste can be a source indicator because the major function of a taste is a utilitarian function and consumers generally do not have access to the taste or flavor of the product unless and until the same is consumed by them.[9] In case an applicant is filing for a taste mark, then the applicant is required to submit a detailed description of the mark.[10]
In the United States, the applicant must mail the flavored goods to the USPTO and the specimens for flavor/taste marks may not be submitted electronically. To show that the specimen for a flavor mark actually identifies and distinguishes the goods and indicates their source, an applicant must submit a specimen that contains the actual flavor and that matches the required description of the flavor. The applicants must first submit information about the specimen online using the appropriate form and then mail in the physical specimen.[11]
Due to the overlap with the functionality doctrine, there appears to be no taste mark registered in the United States yet.
Position of Taste Marks in India
In India, a trade mark is defined under Section 2(1)(zb) of the Trade Marks Act, 1999[12], which states that a trade mark is a mark which is capable of being represented graphically and capable of distinguishing the goods and services from others. A taste can be described in a written form, though, the same may not exactly help in understanding the exact taste of a product mark and may be confusing and ambiguous. However, one of the main issues with the registration of a taste mark is the functionality of the mark. In most of the cases, the taste acts as a functional character of the products/goods for which it is registered.
Further, even the draft Manual of Trade Marks has no mention with respect to the registration of taste marks in India and no taste mark appears to be registered in India till date. This might be due to a number of challenges faced during the application of a taste mark.
Challenges faced in Protection of Taste Marks
The difficulty of representing the mark graphically- Even though a taste mark is capable of being represented graphically by way of a written description of how the taste feels like, the same may not be precise and strong enough to determine the registrability and enforcement of the taste mark. Therefore, illustrating a taste mark through description is subjective and may be very challenging while determining the prosecution and opposition of such marks. Unlike the colour marks or sound marks, which have international classifications such as international colour codes or musical notations, taste marks do not have any generally accepted international classification of tastes, which would ease the process of registering a taste mark.
The difficulty of proving the distinctiveness of the mark- Furthermore, it is difficult to ascertain the distinctiveness of a taste mark merely by relying on the description and a taste mark may only be applied to goods and not services.[13]
The doctrine of functionality- According to the doctrine of functionality, any feature of a product which is also functional feature of the product is not eligible to be protected as a trade mark.[14] This poses a major hurdle for registering a taste mark because taste often performs the function of adding flavor to products. This means that any product meant for human consumption may disqualify for taste protection. This creates the major hurdle for registration of a taste mark. Taste may be registerable only if the taste which is sought to be protected is not inherent to the product itself and is distinctive.[15]
The problem with trade mark for promotion and use- A practical problem that should be considered is the fact that consumers generally only taste the products after they have purchased them. In view of the same, taste marks cannot aid in promotion of products prior to purchase, which means the consumer would know the trade origin once the product was purchased. A taste mark may not be a very practical trade mark for the purpose of source identification for inedible products and may actual encroach upon the concept of trade secret for edible products.
Conclusion
A mark is entitled to protection only if it denotes the source of the good or service to which it is applied and it is unlikely that flavours can ever be inherently distinctive because they do not automatically suggest a source and are a characteristic of the products. Thus, it can be understood that, there exists a lot of challenges in registering a taste trade mark and the law with respect to the same is not well established across the jurisdictions. Therefore, for a taste mark to be granted trade mark protection, a more uniform procedure is required to be established universally to determine the registrability of a taste mark and to provide a clear picture on what can be and what cannot be protected as a taste mark.
[1] A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.
[2] Article 4, EUTMR: An EU trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of: (a) distinguishing the goods or services of one undertaking from those of other undertakings; and (b) being represented on the Register of European Union trade marks (‘the Register’), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.
[3] https://guidelines.euipo.europa.eu/1803468/1789914/trade-mark-guidelines/2-9-3-taste-marks
[4] Article 3(9) EUTMIR: The filing of a sample or a specimen shall not constitute a proper representation of a trade mark
[5] https://guidelines.euipo.europa.eu/1803468/1789910/trade-mark-guidelines/2-9-other-marks
[6] https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/trade_marks/draft-guidelines-2017-wp-lr2/15_part_b_examination_section_4_AG_chap_2_Article_7(1)(a)_clean_lr2_en.pdf
[7] Trademark Manual of Examining Procedure § 1202.13
[8] In re Pohl-Boskamp GmbH & Co., 106 USPQ2d at 1048
[9] Trademark Manual of Examining Procedure § 1202.13
[10] Trademark Manual of Examining Procedure § 807.09
[11] Trademark Manual of Examining Procedure § 904.03(m)
[12] Section 2(1)(zb), Trade Marks At, 1999: “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours
[13] https://jcil.lsyndicate.com/wp-content/uploads/2017/06/TanishaVanshaj.pdf
[14] https://iprlawindia.org/wp-content/uploads/2021/01/Potentiality-of-%E2%80%98Smell-as-a-Trademark-and-its-limitations-harsha-tripathi.pdf
[15] https://s3.amazonaws.com/documents.lexology.com/ba15c85d-ec0e-43e3-8451-f4f5e03f4970.pdf?AWSAccessKeyId=AKIAVYILUYJ754JTDY6T&Expires=1643382179&Signature=0UQNBhFfruvPWegBMm7zVkZeUKA%3D