What's in a brand name?

Battles over trade marks continue to rage, and now even colours and smells are registered, says Gemma Cullis

First Stelios Haji-Ioannou was warned not to use the colour orange for his new easyGroup telephone venture. Then Gordon Ramsay was last week forced to remove the word "cornetto" from his menus at the Boxwood Café in London. The fight for ownership rights of distinctive brands is becoming fiercer by the day, and has spilled on to new battlegrounds as ambiguous as colour and shape, and as amorphous as smell and sound.

A bemused Ramsay has agreed to withdraw his home-made mini "cornettos", which were £6 a go, after being threatened with legal action by Unilever, owner of Wall's. But Haji-Ioannou, owner of easyGroup, told the mobile-phone company Orange: "I am confident that we have the right to use the colour orange, and I'm going to enforce that in court if I have to."

Orange has significant goodwill in its orange branding, and has thus secured a registered trade mark for the colour, which is named, in the internationally recognised Pantone colour-identification system, Pantone 151. But easyGroup, with its range of businesses in aviation, car rental and internet cafés, has registered the slightly redder orange, Pantone 021. The proposal that it will be operating in the same market raises the possibility that consumers will not be able to tell the two oranges apart.

The Patent Office knows that trade marks can last forever, subject to renewal fees, and does not grant them lightly. Most trade marks are assigned for specific words or logos. But a trade mark can be any "sign" that can be "represented graphically" and is capable of distinguishing the trade mark owner's goods from those of other businesses. As a result, businesses have registered shapes, sounds, colours and smells.

The smell trade marks are the most bizarre. The darts manufacturer Unicorn has registered the smell of beer applied to darts flights. A tyre company has staked its claim to the smell of roses on tyres.

Applications for trade marks are supposed to be supported by convincing evidence of their distinctiveness. Those that survive the application process are, generally speaking, the elements of a brand that the public would consider iconic. Examples include the shape of the Coca-Cola bottle; the Intel jingle that sounds when a computer is switched on; the familiar turquoise colour of the label on the Heinz baked beans can.

Third parties have an opportunity to object to a registration, either for inherent lack of distinctiveness or because it is too close to an existing trade mark. Long-standing rivalries, such as that between Mars and Nestlé, give rise to many such objections.

The requirement for "graphical representation" is the biggest obstacle to registration, particularly for those trying to register smells. A recent case in the European Court of Justice held that a chemical formula - previously thought to be the best way of describing a smell - was insufficient. The Trade Mark Registry has stated that it will not grant any new smell marks, unless somebody can come up with a new way of representing them on paper (although the two marks that are already on the register will not be affected by this decision).

Sounds are usually registered as musical notation, but they must include clefs, key and time signatures. For shapes, either marks, drawings or photographs can be included to illustrate the shape in three dimensions. Care must be taken though: Nestlé recently encountered objections because its application for the shape of Polo mints did not specify their size.

Identical marks can be registered by different companies, provided that there is no conflict between the products or services for which their owners intend to use them. In this way, the word "Jif" was registered by Lever Brothers for cleaning fluids, and by Reckitt & Colman for lemon juice, the two marks co-existing for many years, before ending up in the common ownership of Unilever, which rebranded the cleaning fluid as "Cif". Likewise, "Polo" is registered by the Polo-Lauren company for perfumes, sunglasses, furniture and clothing; by Volkswagen in respect of cars; and by Nestlé for confectionery. Problems only occur with co-existing brand names when one owner moves into the established territory of the other.

The existence of two "Budweiser" beers in the United Kingdom is another anomaly. The American "King of Beers", and the Czech "Budwar" brand were each well established in their respective home countries, and it was only when both launched in the UK within a short space of time that interference between the two brands occurred. Because neither brand had built up sufficient goodwill in the UK to prevent the use of the name by the other brand, the courts held that both could continue to use the name. The battle has been global, and the outcome different in other jurisdictions.

Since even a printed colour sample on paper may deteriorate over time, applications to register colours as trade marks must be made by reference to the Pantone system. This allocates a code to identify the exact shade of a colour. However, the courts appreciate that consumers will not always have the two trade marks next to one another to make a direct comparison, and a margin of error is allowed to take account of "imperfect recollection" of the trade mark.

The wrangling is not just tiring, it's very expensive. Orange says that rather than go to court, it wants to reach a compromise with Haji-Ioannou. A spokeswoman for the phone company says: "We are now working out some branding that we think will be acceptable to both parties."

The writer is an intellectual-property specialist at the law firm Reynolds Porter Chamberlain

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