Taste test does not cut it as a trade­mark

Func­tional prod­uct fea­tures are not pro­tectable, US court rules

Business Day - Business Law and Tax Review - - FRONT PAGE - WALDO STEYN

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.

Pic­ture: THINKSTOCK

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

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