At the outset, it must be noted that section 101 of the IP Act defines a trademark as “[a]ny visible sign serving to distinguish the goods of one enterprise from those of another enterprise”. This clearly means that only signs that are visually perceptible are capable of being registered to the exclusion of unconventional marks, such as, sound, smell and taste marks.
It has been readily acknowledged by psychologists that scent offers the strongest sense of memory surpassing sight and sound (Matheson, 2003). Currently, several scent marks have been registered in the United States,4 though across the Atlantic, in Europe, there has been less enthusiasm in this regard.5 There is also debate on the registrability of sound and taste marks given the difficulty of representing them with precision for the purposes of registration. In these circumstances, although in the Sri Lankan context, a sign must in itself be visible in order to be protected, in foreign jurisdictions, especially countries party to the Paris Convention may allow registration of non-visual signs (as in the United States). In such an event, the question arises whether the Sri Lankan IP office would be obliged to register and protect such non-visual signs (which are proven to be distinctive) in terms of article 6quinquies of the Paris Convention. The issue is whether the flexibility granted to WTO Members in terms of the last sentence of article 15:1 (on visual perceptibility) is overridden in light of article 6quinquies of the Paris Convention. This is contentious owing to article 2 of TRIPS which provides that:
- In respect of parts II, III and IV of this Agreement, Members shall comply with articles 1 through 12, and article 19, of the Paris Convention.
- Nothing in parts I to IV of this Agreement shall derogate from existing obligations that Members may have to each other under the Paris Convention, the Berne Convention, the Rome Convention and the Treaty on Intellectual Property in Respect of Integrated Circuits.
As such, article 6quinquies of the Paris Convention obliges Convention States to offer protection to telle quelle marks unless the grounds of denial expressly provided for in part B of the said provision are satisfied. It is noteworthy that the lack of visual perceptibility is not a ground for denial under this scheme. Clearly, a telle quelle mark irrespective of its visual characteristics must be granted protection, and the absolute requirement under Sri Lankan law of visual perceptibility is contrary to the Paris Convention insofar as telle quelle marks are concerned, and therefore, is also inconsistent with TRIPS. Accordingly, although visual perceptibility may be required for ordinary marks, insofar as telle quelle marks are concerned, such a requirement cannot form a hindrance to registration. Thus, a special exception to visual perceptibility must be created for telle quelle marks.
It must be noted that the obligation imposed in terms of article 6quinquies of the Paris Convention is such that every mark duly registered in the country of origin must be accepted for filing and protected “as is” in the other countries of the Paris Union, subject to the express grounds of denial stated in that provision. The WTO's Appellate Body in United States—Section 211 Omnibus Appropriations Act of 199820086 considered the meaning of “telle quelle” appearing in article 6quniquies and found that the French term meant “as is”, that is “in the existing state”.7 It was observed by the Appellate Body (citing the Panel in this case) that:
The ordinary meaning of the term “as is” and read in its context and as confirmed by the negotiating history indicates that Article 6quinquies A(1) addresses the form of the trademark; that is, those trademarks duly registered in one country, even when they do not comply with the provisions of domestic law of a Member concerning the permissible form of trademarks, have nevertheless to be accepted for filing and protection in another country (United States-Section 211 Omnibus Appropriations Act of 1998, paragraph 127).8
Therefore, an important question that ought to be raised is whether visual perceptibility of a sign concerns the form of a trademark. If the answer is in the affirmative, notwithstanding domestic legislation that limits registrability to purely visible signs (such as in Sri Lanka), a non-visual telle quelle mark must be accepted for registration. The WTO's Appellate Body in United States—Section 211 cited an expert who suggested the following:
… whenever a trademark is duly registered in the country of origin, the other countries of the Union are obliged to accept and protect it, even if, as regards its form, that is, with regard to the signs of which it is composed, such trademark does not comply with the requirements of the domestic legislation, subject to the additional rules, particularly the grounds for refusal or invalidation of any mark, considered on its individual merits, established in the Article. This rule will therefore apply to trademarks consisting of numbers, letters, surnames, geographical names, words written or not written in a certain language or script, and other signs of which the trademark is composed (Bodenhausen, 1968, pp. 110–1).
Therefore, it could be argued that just as the form of a mark relates to the letters and numbers by which a sign is composed, the non-visual elements of an unconventional trademark, such as a sound mark, would no doubt concern its form. Therefore, any limitation as regards the registrability of a non-visual sign predicated on its invisibility clearly is a prohibition that relates to the form of the mark sought to be registered.
Commenting on the Trade and Service Mark Act of 1986 (TMA) of Tanzania (which limits registrability to visible signs as in Sri Lanka), it has been observed that:
Article 6quinquies of the Paris Convention may, therefore, be seen as a conduit pipe for the circumvention of the TMA. Imagine the following scenario: company Z established in the EU has been able to secure registration of a sound mark (in the form of a musical tune) as a CTM, by observing the requirements set out by the ECJ in the Shield Mark decision. Furthermore, imagine that on the basis of novel means of representation which have as yet not been tested by the ECJ (e.g. a chromatogram), the same company has even succeeded to register an odour mark. On the basis of Art. 6quinquies Paris Convention, the authorities in other countries which, like Tanzania, have excluded trade mark registration for non-visible marks would be obliged to accept that company Z's marks cannot be barred per se from registration on the basis of their domestic rules, but only if the sign falls short of the requirements listed in Part B of Art. 6quinquies (Jaconiah, 2009, p. 780).
Thus, it would follow that if ICICI Bank's jingle (a sound mark) that was successfully registered recently in India9 was sought to be registered in Sri Lanka under article 6quinquies of the Paris Convention, the Sri Lankan IP Office would be bound to register it despite the limitation under Sri Lankan law restricting registrability to only visible signs.
However, there is one important point that must be considered. This relates to the specific reading of article 15:2 and therefore requires to be reproduced. Article 15:2 that reads as follows:
[p]aragraph 1 [of Article 15] shall not be understood to prevent a Member from denying registration of a trademark on other grounds, provided that they do not derogate from the provisions of the Paris Convention (1967) (emphasis added).
Accordingly, a sign eligible for registration can be denied registration “on other grounds” only if such denial does not derogate from the provisions of the Paris Convention. The use of the words “on other grounds” implies that the grounds of denial that must not derogate from the provisions of the Paris Convention are those other than what is specified in article 15:1. Visual perceptibility as a precondition for registration is a ground that may be imposed by a WTO Member in terms of article 15:1 and therefore is not any “other ground” that is referred to in article 15:2. It perhaps can be argued that if a Member elects to impose the requirement of visual perceptibility as a precondition for registration, such a requirement supersedes the telle quelle provisions of the Paris Convention. If this argument is accepted, non-visual signs can be refused registration even when sought to be registered under the telle quelle provisions of the Paris Convention. Thus, if that was the case, the Sri Lankan IP Office would not be obliged to register non-visual telle quelle marks.
Another argument that could be put forward by Sri Lanka, if it were to deny the registration of non-visual marks sought to be registered under the priority provisions of the Paris Convention, is that signs which lack visual perceptibility, inherently lack distinctiveness, and therefore, forms the second ground for denial under article 6quinquies B of the Paris Convention, namely, of signs that are “devoid of any distinctive character”.
Objective Grounds for Denying Trademark Registration
Section 103(1) of the IP Act lists 13 grounds on which an application to register a sign can be rejected. As stated above, TRIPS article 15:2 permits Members to deny registration on “other grounds, provided that they do not derogate from the provisions of the Paris Convention”. Although the Paris Convention in article 6 provides that “[t]he conditions for the filing and registration of trademarks shall be determined in each country of the Union by its domestic legislation”, article 6quinquies dealing with telle quelle marks impose specific conditions upon which protection can be denied.
Given the absence of a special provision in the IP Act that is applicable to telle quelle marks, one must assess each of the grounds for denial found in section 103(1) and determine whether the grounds go beyond the scope of article 6quinquies B (i)–(iii) or any other provision of the Paris Convention. If a ground runs afoul of any provision of the Paris Convention, by virtue of TRIPS article 15:2 read with article 2:2, the ground also would be contrary to TRIPS.
At the outset, it can be stated with confidence that grounds (b)–(f) in section 103(1) dealing, respectively, with descriptive signs, signs that have become customary in the current language or in the bona fide and established practices of trade in Sri Lanka, signs that are non-distinctive and signs that are contrary to public morality or public order and signs that are intended to deceive or mislead the trade circles or the public, fall within the scope of article 6quinquies B (i)–(iii). Therefore, the above grounds, be it for ordinary marks or telle quelle marks, are compliant with the Paris Convention and therefore the TRIPS. However, some of the other grounds raise some compatibility issues.
Firstly, ground (a) which disentitles signs “which consists of shapes or forms imposed by the inherent nature of the goods or services or by their industrial function” from being registered raises some interesting questions. This is an important ground to maintain fair competition, because if one registers a sign that comprises the natural shape of the product to which it attaches, it would effectively curtail competition. The registration of the shape of a banana as a trademark for bananas may be cited as a suitable example. Such a situation would entitle only the owner of the banana shape mark to trade in bananas, as none other could legally use the sign (i.e. the shape of a banana) in business, as it would be identical/similar to the natural shape of the product (bananas) itself. As such, preventing the registration of marks that consist of signs essentially forming the natural shape of a product must be prevented to avoid market monopolization.
A similar argument may be made in relation to signs that entail technical functions. For instance, if a sign is registered which forms a shape or design that is required to achieve a certain technical result, trademark registration would effectively eliminate anyone but the owner of the mark from using the means of attaining that technical result, thus, creating a monopoly over the technology. In other words, trademark protection would serve as a surrogate for enterprises whose patents have expired. Philips v Remington, a dual that evoked global interest, serves as an ideal example for this situation. Given these policy reasons, ground (a) in section 103(1) plays a crucial role in maintaining fair competition.
However, it is important to note that article 6quinquies dealing with telle quelle marks does not permit marks duly registered in a Paris Union country to be denied registration on the lines of ground (a) in section 103(1). Thus, if a mark, which comprises entirely of a sign that is required to achieve a technical result, is registered in a Paris Union country and is subsequently sought to be registered in Sri Lanka, ground (a) of section 103(1) cannot be invoked to deny protection as it would stand contrary to article 6quinquies B of the Paris Convention. This situation is not entirely impossible given the Australian decision in Koninklije Philips Electronics NV v Remington Products Australia Pty Ltd, which ruled that Remington did not infringe Philips's trademark, because the “sign” used by Remington was “…nothing other than the product itself”, and therefore there was no trademark use by Remington.10 The Court did not make a pronouncement on the validity of the registration of the shape mark by Philips, which meant that the registration continued. However, it was not disputed that the shape of the three-headed razor performed a technical function. As such, in theory, it is possible for a valid registration of a shape mark to exist in a Paris Union country notwithstanding the fact that the shape attains a technical result. If that is so, Sri Lanka would have to honour the validity of the foreign registration and ground (a) of section 103(1) cannot be a bar for registration. The only manner in which Sri Lanka could seek to justify ground (a) is to make avail of the qualification to the scope of article 6quinquies B by virtue of the last sentence in that article which provides that “[t]his provision is subject, however, to the application of article 10bis”. Article 10bis dealing with unfair competition mandates that:
- the countries of the Union are bound to assure to nationals of such countries effective protection against unfair competition;
- any act of competition contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition.
As such, it may be argued that the ground for denial in section 103(1)(a) of the IP Act is for the purpose of preventing unfair competition and therefore does not contravene article 6quinquies B of the Paris Convention. In the alternative, the registering authority may declare that the public would not perceive a shape mark to be distinctive but merely as being functional or descriptive. If the above arguments can be sustained, the registering authority may be able to deny registration of a functional sign or a sign comprising the natural shape of a product in terms of ground (a) of section 103(1) without violating article 6quinquies B of the Paris Convention and therefore TRIPS.
Secondly, ground (g) of Section 103(1), which is rather ambiguous, denies the registration of a sign “which does not represent in a special or particular manner the name of an individual or enterprise”. In the absence of any clarification in this regard, the Sinhalese11 text of the Sri Lankan IP Act may provide some useful insight. Given that where there is any inconsistency the Sinhalese text of the IP Act would prevail over the English text,12 it perhaps is necessary to inspect section 103(1)(g) of the Sinhalese version of the IP Act. An examination seems to reveal that, perhaps, the intention of the legislature was to impose a requirement for a trademark registrant to establish the link between himself (or itself, in the case of a legal entity) and the manufacturer of the goods or the provider of the services in relation to which the mark will be used. As such, a mark that does not represent any commercial linkage to an individual or enterprise engaging in business would be incapable of being registered. This may be a positive step in eliminating mala fide registrations by persons not engaging in any business or trade in an attempt to prevent others from lawfully registering a mark. Such malicious forms of registration of marks, akin to cyber-squatting, are commonplace, especially for those contemplating entering a niche market in the future. Thus, the requirement as to “ownership” is regarded as a safeguard to limit trademark registration to bona fide businesses. However, as far as telle quelle marks are concerned, can such an ownership requirement be imposed? Given that this requirement does not form the grounds for denying registration under article 6quinquies B of the Paris Convention, it may seem to contravene the Paris Convention and thus the TRIPS. However, a perusal of the WTO's Appellate Body decision in United States—Section 211 Omnibus Appropriations Act of 1998 tends to show that a ground for denial based on the ownership requirement may still form a valid basis for denying the registration of telle quelle marks. This WTO dispute concerned a provision of US law on the requirement of ownership for trademark registration. As discussed above under the heading “Visual perceptibility”, unlike the visibility requirement that relates to the form of the mark sought to be registered, the ownership requirement does not relate to the characteristics of the mark. Instead, it relates to an existing link between the mark, the registrant and the manufacturer of the goods or services that do not concern the characteristics or form of the mark. As such, the Appellate Body concurred with the Panel in the above referenced WTO dispute which concluded that:
… as we noted above in our examination of Section 211(a)(1) in relation to Article 15.1 of the TRIPS Agreement, Section 211(a)(1) is a measure that regulates ownership and does not deal with the form of the signs of which the trademark is composed. For these reasons, Section 211(a)(1) is not inconsistent with Article 6quinquies A(1) of the Paris Convention (1967) (United States-Section 211 Omnibus Appropriations Act of 1998, paragraph 127).13
Accordingly, given that the ownership or similar requirement as probably envisaged by section 103(1)(g) of the Sri Lankan IP Act does not relate to the form of the mark to be registered, the lack of proper ownership even as regards telle quelle marks can form a valid basis of a ground for denying registration in the country concerned, in this case being Sri Lanka.
Thirdly, ground (h) prevents the registration of signs “which [are], according to its ordinary14 signification, a geographical name or surname”. This implies that any sign which in its ordinary signification indicates a geographical name or a surname cannot be registered. This perhaps is a measure aimed at maintaining fair competition, the underlying purpose being the preservation of the possibility for traders to utilize geographical names and surnames freely to indicate the origin of their products or services or the affiliation of an individual to the provision of goods or services.
In the case of geographical names, however, not always do they imply the origin of the product concerned. Therefore, at times, geographical names can legitimately be used as trademarks as indicating trade origin. This was the primary contention in Windsurfing Chiemsee Produktions—und Vertriebs GmbH v Boots—und Segelzubehor Walter Huber, where the claimant was the seller of sporting clothes close to the banks of the Chiemsee, the largest lake in Barvaria. The claimant used a picture mark “Chiemsee” for its products. The defendant also a manufacturer of sporting clothes used the mark “Chiemesee” for its products and was situated in almost the same area adjoining the Chiemesee lake. The claimant filed action for inter alia trademark infringement and the defendant took up the position that Chiemesee being a geographical name must be free for all to use as an indicator of the geographical origin of the products. The European Court of Justice (ECJ) held that the exclusion from registration of “geographical names” in article 3(1)(c) of the European Union Trademarks Directive prohibits the registration of geographical names as trademarks not only where the names designate places which are, in the mind of the relevant class of persons, currently associated with the category of goods in question, but also applies to geographical names that are liable to be used in future by the undertakings concerned as an indication of geographical origin of that category of goods. However, Court went on to qualify this prohibition by stating that:
In that connection, Article 3(1)(c) [of the Directive] does not in principle preclude the registration of geographical names which are unknown to the relevant class of persons or at least unknown as the designation of a geographical location or of names in respect of which, because of the type of place they designate (say, a mountain or lake), such persons are unlikely to believe that the category of goods concerned originates there (Windsurfing, at paragraph 33).
The ECJ, thus, opined that merely because a mark amounted to a geographical name that did not necessarily mean that it cannot be registered as a trademark. As such, there is no absolute prohibition on the registration of geographical names as trademarks.
It is in this light that ground (h) of section 103(1) of the Sri Lankan IP Act must be interpreted. Given that ground (b) of this section explicitly precludes the registration of signs that may inter alia serve to designate the place of origin of the product, ground (h) insofar as it relates to geographical names seems to be superfluous and repetitive. The aim of this aspect of ground (h) could very well be carried out by ground (b) of section 103(1). Further, if ground (h) is interpreted as an absolute restriction on the registration of geographical names, this surely falls short of the accepted norms pertaining to geographical names and distinctiveness in other jurisdictions. Further, given the possibility of geographical names being registered as trademarks in other jurisdictions, including Paris Union countries, it is always possible for geographical names to form part of telle quelle marks that must be registered pursuant to Sri Lanka's obligations under the Paris Convention.
An example includes Montblanc being registered as a trademark for pens despite the fact that Mont Blanc meaning “white mountain” also denotes the highest mountain in the Alps range. If such a mark is registered in a Paris Union country, which undoubtedly in its ordinary signification denotes a geographical name, such a mark would be incapable of being registered in Sri Lanka as a result of section 103(1)(h). This clearly would violate the provisions of the Paris Convention where the only ground for denying registration of a geographical name is where the same denotes the place of origin of that type of goods. Thus, where a mark sought to be registered comprises a geographical name, unless the type of goods in contention is actually manufactured or designed in the geographical area concerned, such a mark must be registered, notwithstanding the fact that it is a geographical name, so long as the requirement as to distinctiveness is satisfied. As such, given the existence of ground (b), the geographical aspect of ground (h) is not only superfluous, but also is contrary to the Paris Convention and therefore the TRIPS.
The second aspect of ground (h) regarding surnames also does not fail to raise some interesting concerns. It must be noted that surnames have and do form distinctive trademarks capable of performing the function of trade origin. Some examples include Cadbury, T.M. Lewins and even most renowned hp (Hewlett Packard). These are trademarks that originate from surnames of the individuals who worked towards the establishment of their businesses. As such, an absolute denial of a mark from being registration on the ground that it forms a surname cannot withstand the test of common legal sense. In Nichols plc v Registrar of Trade Marks, the ECJ observed that the distinctive character of personal names and common surnames must be assessed in relation to the goods or services involved and to the perception of the relevant consumers, with a specific assessment in each case, and applying the same criteria that are utilized in the assessment of distinctiveness of any other mark. Therefore, marks consisting of personal names are to be assessed on the same footing as any mark, thus, re-iterating that names too can form valid trademarks provided that they are distinctive. Furthermore, even though the “ordinary signification” of a mark is to denote a surname, in cases where such a surname is uncommon, the possibility of it being recognized as the origin of goods or services is significantly higher.
It is noteworthy that in cases of both geographical names and surnames, the IP Act does not set out the scope within which the “ordinary signification” must be assessed. Is it a global test that is to be applied? On the other hand given that trademark protection is territorial in nature, must a localized test be applied? As the European cases cited above demonstrate, it is possible for geographical names and surnames to be registered as trademarks, and where registration of such a mark is sought in Sri Lanka under the privilege conferred by article 6quinquies of the Paris Convention, the blanket prohibition against registering geographical names and surnames as trademarks found in section 103(1)(h) in the IP Act seems to run contrary to a country's obligation under the Paris Convention and hence the TRIPS.
Fourthly, grounds (i)–(k) in section 103(1) must be considered. They include the denial of registration of signs that reproduce or imitate armorial bearings, flags or other emblems, initials, names or abbreviated names of any State or any intergovernmental international organization,15 which reproduces or imitates official signs or hallmarks of a State, unless authorized by the Competent Authority of that State,16 or which resembles in such a way as to be likely to mislead the public, a mark or a collective mark or a certification mark the registration of which has expired and has not been renewed.17 These may be treated as natural extensions to ground (f) of section 103(1). In terms of ground (f), the registering authority may deny the registration of marks “which [are] likely to mislead trade circles or the public as to the nature, the source, geographical indication, the manufacturing process, the characteristics or the suitability for the purposes of the goods of services concerned”. Given that ground (f) could be easily couched within the third ground of denial in article 6quinquies B it could be said that ground (f) as well as grounds (i)–(k) are compatible with the Paris Convention and therefore TRIPS.
Finally, signs “the registration of which has been sought in respect of goods or services the trading of which is prohibited in Sri Lanka” must be denied registration in terms of section 103(1)(l). Insofar as telle quelle marks are concerned, it may be stated without doubt that such a ground cannot form a valid ground for denial under article 6quinquies and hence stands contrary to the Paris Convention. Even in relation to ordinary marks that are sought to be registered by direct registration (instead of seeking priority under the Paris Convention) does ground (l) in section 103(1) contravene the express provisions of both the Paris Convention and TRIPS? Both the Paris Convention in article 7 and the TRIPS in article 15:4 stipulate that the nature of the goods for which the mark is to be applied cannot form a reason for denying registration of a mark. Any decision by the Sri Lankan Government prohibiting the trading of particular goods or the provision of particular services would in all probability be made considering the nature of the goods or services.
For example, if the nature of certain goods is such that they harm the environment or would be contrary to public morality, the trading of such goods no doubt would be prohibited in Sri Lanka. Therefore, the decision to prohibit the trading of goods or services in most instances would relate to the nature of the goods or services. Therefore, by virtue of section 103(1)(l), if the denial of trademark registration is based on an existing ban on trading of the relevant goods/services, it is logical to conclude that such a denial directly (or at least indirectly) would relate to the nature of the goods/services. As such, denying the registration of a sign on the basis that the goods/services to which it relates is banned in Sri Lanka, cannot be a valid ground for denial if the basis of trade prohibition relates to the nature of the goods/services. Therefore, section 103(1)(l) if invoked in a manner described hitherto would be contrary to both the Paris Convention and TRIPS.
Despite it being somewhat outside the purview of this paper, it may be interesting to consider the rationale behind article 7 of the Paris Convention (re-enacted in article 15:4 TRIPS). If the goods/services are prohibited in a country, why permit the registration of marks that relate to such prohibited goods/services? The rationale for this provision is to eliminate discrimination with regard to the availability of trademark protection based on the types of products or services involved. Correa (2007, p. 182) suggests that “…article 15:4 [of TRIPS] would not allow a Member to deny registration of trademarks for products which are not in the public interest, such as being harmful to health”. The position pertaining to trademarks must be contrasted with that of patents, where Members are allowed to deny patent protection in cases where the prevention of commercial exploitation is necessary in the interest of inter alia morality of ordre public.18 Therefore, from this discussion, the conclusion leaves no doubt that section 103(1)(l) is contrary to the letter and spirit of both the Paris Convention and TRIPS.
How then could a country such as Sri Lanka prevent the use of trademarks in relation to goods/services that the trading of which is prohibited in the country. The answer lies in the nature of trademark rights. Unlike in the case of patents, where the right explicitly guarantees the enjoyment of patent rights (article 27:1, TRIPS), trademark rights are negative in nature. That is, article 16:1 of TRIPS confers the owner of a trademark the right to exclude any third party from utilizing the protected trademark. The provision does not confer a right to use the mark. As such, the strategy Sri Lanka could adopt in keeping with the norms of TRIPS is to permit the registration of marks while disallowing the use of those marks in cases where the products concerned are prohibited in Sri Lanka. However, the possibility of such an approach must be considered in the light of the right to use a trademark expressly conferred by section 121 of the IP Act. Therefore, an exception to the right to use one's trademark must be incorporated in order to avoid any apparent conflict and for public policy and morality to be restored.