November 8, 2006
Sponsoring Committee: Nontraditional Marks Committee
WHEREAS, it is possible that touch characteristics can function to indicate the origin of goods and services;
WHEREAS, few jurisdictions have had occasion to rule on the recognition of, and protection afforded to, touch marks;
WHEREAS, the lack of rulings makes protection uncertain, and there may be an increasing awareness that touch characteristics can function to indicate origin of goods and services;
WHEREAS, providing trademark protection for touch characteristics that function as marks will enhance the ability of consumers to identify the source of products or services;
BE IT RESOLVED, that it is the position of the International Trademark Association that a properly defined touch characteristic that is distinctive in relation to a product or service may function as a trademark or service mark and, therefore, in appropriate circumstances, should be entitled to trademark recognition, protection and registration.
There are few known instances internationally relating to the issue of whether a touch characteristic is protectable as a mark. Under most conventions and national statutory provisions, the definition of a trademark or service mark does not exclude such marks. Enquiries in the Committee have revealed few instances of applications to register touch marks, or any practice guidelines relating to touch marks, but a consensus was reached in the Committee that a properly defined touch characteristic that is distinctive in relation to a product or service can function as a trademark or service mark and therefore, in appropriate circumstances, should be entitled to trademark recognition, protection and registration.
It is widely accepted that a trademark or service mark which is not perceived visually (for example a sound mark or a smell mark) can be protected and registered, provided that the mark can be defined clearly and unambiguously. In member states of the European Union, a sign, to be registrable, has to be represented graphically, and the European Court of Justice has confirmed (Case C-273/00 Sieckmann 2002 E.C.R. I-11737 paras 47-55) that the graphical representation (in that case of an olfactory mark) has to be “clear, precise, self-contained, easily accessible, intelligible, durable and objective.” The requirement of graphical representation outlined above is applicable also to touch marks, such as the sensory, touch mark depicted in U.S. Registration No. 3,155,702 consisting of a “velvet textured covering on the on the surface of a bottle of wine” for wines in International Class 33 issued October 17, 2006 to American Wholesale Wine & Spirits, Inc. of Glenview, Illinois.
While a touch mark may possibly be inherently distinctive (if the touch characteristic, properly defined, is unusual and unexpected in the context of the goods or services involved), it is more likely that evidence of distinctiveness acquired through use will have to be provided before a touch mark is registrable as a trademark or service mark.
The functionality doctrine, in order to preclude adverse effects on competition, bars protection for something that is essential to the use and purpose of the article or which inherently affects its cost or quality. Functional touch characteristics would be subject to the same exclusions or limitations as functional product configurations or generic word marks.
Difficulties in assessing confusion between two touch marks, or between a touch mark and a visual mark, can be dealt with using the reasoning and logic presently applied to other types of marks.
In summary, the Committee believes that it is important for the Board to adopt a position on the protectability of touch marks. Accordingly, the Committee requests that the Board of Directors approve the foregoing resolution stating that a properly defined touch characteristic that is distinctive in relation to products or services may function as a trademark or service mark and, therefore, in appropriate circumstances, should be entitled to trademark recognition, protection and registration.