Technological progress and development in the advertising sector have led to new forms of communication between companies and consumers, whilst legislation has not evolved at the same rate.
In this regard, non-conventional trade marks have emerged, which do not fit into the ordinary classification of “nominative”, “figurative” or “mixed” marks.
Trade marks that are considered non-conventional include those "of isolated colour without limitation of shape", such as the lilac colour of Milka chocolate; “three-dimensional”, such as Toblerone chocolate; “slogan” marks; “hologram” marks, such as the 3D figure on VISA credit cards; “animated or moving” marks, such as the Internet Explorer logo; “position” marks, such as the stitching on the trouser pockets of Levis and Calvin Klein; “gesture” marks, such as the number 1 of Brahma beer; “texture” marks; “sound” marks, such as the Intel tone; “smell” marks, such as the smell of freshly-cut grass for tennis balls; and “taste” marks, such as liquorice flavour for printed material.
A recent study conducted by the World Intellectual Property Organisation showed that 70% of countries accept the registration of isolated colour marks without limitation of shape; 84% allow the registration of three-dimensional marks; 93% register slogans as trade marks; 45% authorise the registration of holograms; 50% allow the registration of musical sounds and 38% register non-musical sounds; and only 28% register animated signs.
These statistics show that, despite the fact that they are already present in our daily lives, this new category of trade marks does not enjoy the due protection. We therefore come across difficulties in Brazil when protecting non-conventional trade marks.
The Brazilian conflict is largely due to the legal definition of a trade mark, which states that it must be “visually perceptible”.
This means that non-visible marks cannot be considered trade marks, whether they be texture, sound, smell or taste marks. Furthermore, this legal impediment is also absolute for trademarks “of isolated colour without limitation of shape”, whereas advertising and slogans are protected by copyright.
The difficulty of representing trade marks such as hologram, moving, position, gesture, sound, smell and taste marks completes the list of the main obstacles to registering non-conventional trade marks.
In view of such difficulties, it has been observed that some applicants choose to register trade marks in traditional forms -mixed, figurative or three-dimensional- as an alternative way of achieving a minimal protection over their position, animated, gesture and hologram marks.
This is yet another example of a situation where mere legislative inertia is unable to stop human development. Suffice to say that improving the concept of trade marks is not only inevitable; it is essential if the legal world is to be brought into line with the real world.