Trademark Law Episode 20: Legal Framework for Protecting Non-Traditional Trademarks in Common Law and the EU

This episode explores the evolving legal frameworks for protecting non-traditional trademarks, such as colors, shapes, sounds, smells, and holograms, under both Common Law systems and the European Union. Non-traditional trademarks challenge conventional standards for registrability and distinctiveness, creating unique legal landscapes in Common Law jurisdictions like the US and UK, as well as across the EU. In Common Law jurisdictions, non-traditional marks can be registered, but applicants must meet stringent criteria. For example, color marks in the US require evidence that consumers directly associate the color with a specific source, as seen in Qualitex Co. v. Jacobson Products Co.. Shape marks and product packaging must also meet distinctiveness requirements and cannot be functional—a principle enforced in cases like TrafFix Devices, Inc. v. Marketing Displays, Inc. This functionality doctrine prevents any exclusive rights that could inhibit competition. The EU takes a harmonized approach to non-traditional trademarks, regulated by the EU Trade Mark Regulation (EUTMR). The European Intellectual Property Office (EUIPO) allows non-traditional trademarks if they meet the requirements of being clearly defined, non-functional, and distinctive. Notably, the Libertel v. Benelux-Merkenbureau case established the criteria for color trademarks in the EU, requiring a clear and durable indication of the color claimed. For shapes, the KitKat case demonstrated how the EUIPO evaluates functional characteristics and distinctiveness in product design, underscoring the difficulty of achieving protection without strong consumer association evidence. This episode concludes with a comparative analysis of the protection available in Common Law and the EU, highlighting recent developments, challenges, and emerging trends in non-traditional trademark registrations across these jurisdictions. Whether for brand expansion or protecting innovative designs, understanding the requirements and limitations for non-traditional trademarks is essential for businesses navigating today’s global IP landscape.