Taste test does not cut it as a trademark
Functional product features are not protectable, US court rules
ACOURT in the US recently ruled on a matter involving that rarest of creatures, a taste trademark — something that’s referred to by those who like to flaunt their vocabulary as a “gustatory trademark”. In the case of New York Pizzeria v Ravinder Syal the issue was whether a restaurant could claim trademark rights to a particular pizza taste.
The US court said no. It raised the same objections that have been raised in similar cases in the past. It accepted that “flavour can carry meaning”, but it said that “meaning entitles a mark to trademark protection only if it distinguishes the source of the product”. It said that “it is unlikely that flavours can ever be inherently distinctive because they do not automatically suggest a product source”.
It said functional product features are not protectable.
In an earlier US case, the US trademark authority rejected an application by the pharmaceutical company NV Organon, which had applied to register an orange flavour that was used for an anti-depressant drug. The tribunal said that the application fell foul of the functionality prohibition, because flavouring performs a utilitarian function that cannot be monopolised without hindering competition in the pharmaceutical trade. But it also said that it had difficulty understanding how a taste can act as a trademark, when consumers only taste goods after purchase. It said:
“Further it is not clear how taste would as a practical matter function as a trademark. A consumer generally has no access to the product’s flavour prior to purchase... unlike colour, sound and smell, there generally is no way for consumers routinely to distinguish products by sampling them before they decide which one to purchase… consequently it is difficult to fathom exactly how a flavour could function as a source indicator in the classic sense, unlike the situation with other non-traditional trademarks such as colour, sound and smell to which consumers may be exposed prior to purchase.”
The functionality issue was also raised in the New York Pizzeria case, where the court said the hurdle is high for trademarks when it comes to the flavour of medicine, but it is far higher — and possibly insurmountable — in the case of food. “People eat, of course, to prevent hunger. But the other main attribute of food is its flavour, especially restaurant food for which customers are paying a premium beyond what it would take to simply satisfy their basic hunger needs. The flavour of food undoubtedly affects its quality, and is therefore a functional element of the product,” the court said.
The issue has also been considered in the EU. In a case involving a pharmaceutical company, the tribunal rejected an application that comprised an artificial strawberry taste to be applied to pharmaceuticals. The tribunal raised multiple objections. It said that consumers don’t perceive tastes as trademarks. It said that tastes are too indefinite and incapable of comprehension by competitors and the public. It latched on to the fact that a strawberry taste is commonplace, given that drugs companies often need to mask the fact that the remedies they’re selling to make you feel better, may taste rather unpleasant.
It said: “Any manufacturer… is entitled to add the flavour of artificial strawberries to these products for the purpose of disguising any unpleasant taste that they might otherwise have or simply for the purpose of making them pleasant to taste… moreover, the taste is unlikely to be perceived by consumers as a trademark; they are far more likely to assume that it is intended to disguise the unpleasant taste of the product.”
So what about SA? I’m not aware of any taste trademark that’s been registered in SA, although on the face of it the definition of a “mark” in our Trademarks Act is wide enough to cover a taste — “any sign capable of being represented graphically”.
I suspect that many of the same objections would be raised to an application for a taste trademark in SA. Is a taste really perceived as a trademark? Does the taste really function as a badge of origin or source indicator, given that the customer only experiences it after purchase? In many cases there may be issues of non-distinctiveness. There may be arguments about whether the taste is really separable from the product, what the Americans describe as the “functionality issue” — our law deals with functionality in various ways , for example by prohibiting registration of
anything that consists exclusively of a sign or indication that designates the kind, quality or other characteristics of the goods.
Finally, can a taste be registered in such a way that makes it possible for people to understand what the registration is, and what it is that they’re not allowed to use? Although I understand that the European authorities are rethinking the requirement that a trademark must be capable of graphical representation, our law does still require this. This requirement has been defined in the EU to mean that the trademark that’s filed must be “clear, precise, self-contained, easily accessible, intelligible, durable and objective” and this definition seems to be followed here. Although the definition has been interpreted to mean that Pantone numbers might be acceptable for colour trademarks, and musical notations or sonograms might do for sound trademarks, it has caused real problems with smell trademarks, where chemical formulae, odour samples, and written descriptions have all been rejected.
I suspect that taste trademarks pose the same sort of challenges as smell trademarks.
Perhaps taste is an example of something that may be a trademark in the wider and looser sense — for example, “that strong pepperoni taste is that restaurant’s trademark” — but it isn’t a trademark in the legal sense of a protectable source indicator.
BUY FIRST, EAT LATER The US trademark authority had difficulty understanding how a taste can act as a trademark, when consumers only taste goods after purchase