Non-Traditional Marks Committee Advocates for Protection of NTMs Around the Globe

Published: September 27, 2023

Carrie Johnson

Carrie Johnson Eastman & Smith Ltd. Toledo, Ohio, USA Vice Chair, Non-Traditional Marks Committee

The Non-Traditional Marks Committee (NTMC) develops and advocates INTA’s policy on the balanced protection of nontraditional marks (NTMs). These NTMs include sounds, colors, trade dress, scents, textures, and moving images. The NTMC, which has more than 120 members, is divided into seven subcommittees. Six subcommittees are regional, covering Asia Pacific, Canada, Europe/Central Asia, Latin America/Caribbean, South Asia, and the United States. The NTM Global Advocacy Subcommittee is dedicated to promoting a global perspective on the protection of NTMs.

As marketers continue to innovate and trend away from static brand representations, brands must continue to be almost instantly recognizable to consumers. Consequently, NTMs have become more and more popular, replacing mere words and logos and resulting in increased recognition by brand owners of NTMs as valuable assets that need protection. Unfortunately, registration of NTMs is challenging, with formalities and required evidence varying from one jurisdiction to the next.

The NTMC monitors NTMs—their prosecution, case law, legislation, and regulations in various jurisdictions—and provides training and guidance on prosecution trends and best practices for their registration. This committee term, the NTMC expanded its global reach, engaging in training and policy dialogues with trademark offices and practitioners globally, including in Bangladesh, Bosnia, Bulgaria, Canada, Chile, China, Greece, India, Mexico, Pakistan, Paraguay, Serbia, Sri Lanka, Turkey, and the United States.

Here is a selection of highlights from the NTMC’s achievements during the 2022–2023 Committee Term:

The Asia Pacific Subcommittee is active in policy dialogues, including, in 2022, with Chinese e-commerce platforms Douyin and Pinduoduo, and hosted a roundtable earlier this year covering the Fifth Amendment to China’s Trademark Law, with a focus on China’s practices pertaining to registration and protection of NTMs. The Subcommittee also published an INTA Bulletin feature article titled, “Protection of Product Shape in China: Nonconventional Approaches for Nontraditional Marks,” which provides guidance for the registration of a product’s shape or packaging.

The Canada Subcommittee tracks file histories for NTMs filed in the Canadian Intellectual Property Office following the 2019 amendments to Canada’s Trademark Act, which expanded the definition of a “trademark” to include scents, tastes, holograms, moving images, textures, and other NTMs. The Subcommittee is preparing to publish guidelines for registration of NTMs in Canada before the end of the current committee term.

The Europe/Central Asia Subcommittee maintains a matrix of case law from the European Union Intellectual Property Office (EUIPO) Boards of Appeal and General Court on inherent and acquired distinctiveness of shape marks. In this respect, the Subcommittee is focused on evaluating how the EUIPO implements the “significant departure” test to determine whether a 3D mark is inherently distinctive, i.e., whether the 3D mark represents a significant departure from the common shapes in the market. In addition, the Subcommittee, with EUIPO participation, hosted an online workshop on NTMs for the trademark offices of Bosnia and Herzegovina, Bulgaria, Greece, Serbia, and Turkey.

The Latin America/Caribbean Subcommittee is engaged in extensive training sessions with the trademark offices of Chile, Mexico, and Paraguay. It published the INTA Bulletin feature article, “A Look at Nontraditional Marks in Latin America and the Caribbean.”

Recognizing the difficulty of enforcing NTMs in online marketplaces, the United States Subcommittee hosted a virtual event featuring a panel of representatives from leading e-commerce marketplaces exploring how rights owners and online marketplaces can work together more successfully on the issue. The Subcommittee also met with representatives from the United States Patent and Trademark Office for a panel discussion on NTMs, sharing perspectives from both outside counsel and in-house counsel on the challenges of prosecuting applications for NTMs in the United States.

The South Asia Subcommittee held a virtual roundtable highlighting NTM perspectives, with more than 100 participants joining the event. It was the first regional event on NTMs, covering perspectives from Bangladesh, India, Pakistan, and Sri Lanka. The Subcommittee also authored an INTA Bulletin feature article titled, “How Nontraditional Mark Regimes Differ in South Asia.”

Finally, the NTM Global Advocacy Subcommittee advocates for international consistency and standardization of NTM applications, provided the standardization is applied within the confines of applicable local laws. Last term, this Subcommittee finalized the Model Guidelines for the Treatment of NTMs, which outlines the best NTM practices based upon the laws, rules, and practices of many jurisdictions evaluated by the NTMC. The Subcommittee also developed a slide deck for presenting the Model Rules.

There is still much work to be done in harmonizing and improving laws created to protect NTMs globally as this exciting area of trademark law continues to change as the market evolves. The NTMC looks forward to building on this progress in the next term and beyond.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

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