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Tactile Trademarks: the challenge of a new type of registration

In the dynamics of current market relationships it is common nowadays that the companies want their clients to identify their products or services not only from the visual (common advertisement methods), but also to get the attention of all the consumers senses.

This is how the interest in the protection of what is known as NON-TRADITIONAL trademarks has increased. These non-traditional trademarks can be described as those that can be perceived by any of the human five senses.

The legal background of said protection can be found in the Singapore Treaty of Trademark Law. Although the countries of the Andean Community are not part of said Treaty, it is a necessary referent to understand the scope of said unusual protection. This Treaty does not limit trademarks to two-dimensional signs, but instead it opens the concept to new types of trademarks such as holographic, movement, color, sound, smell, taste or tactile trademarks.

Specifically making reference to tactile trademarks, Colombia has taken a significant step towards understanding how the National Trademark Office must proceed with this kind of “special” applications, thanks to the “Old Parr” case, in which the manufacturer of said liquor requested for protection as trademark the bottle of the product.

In the preliminary rulings issued on August 24, 2015 (process 242-IP-2015), the Andean Court of Justice stated that “in so-called tactile trademarks is the surface which leads to recognition and protection, for example, because it has a particular and recognizable texture.” This analysis is consistent with the provisions of the Andean Decision 486, the main legal source of Intellectual Property Rights in Colombia, which included among the types of signs that can be recognized as trademarks colors, smells, sounds, and three-dimensional signs, leaving the door open to new types of protection by using the term “among others” in Article 134. Notwithstanding the foregoing, the sign to be registered must fulfill the same requirements as traditional trademarks, including graphical representation susceptibility, which is one of the biggest challenges of this type of applications. In the process above referred, the Court interpreted broadly the graphical representation concept, establishing the requirements for it to be acknowledged: i) clear, precise and concrete description, including three-dimensional drawing or photograph; and ii) physical sample of the tactile trademark.

Resuming, this broad interpretation of the Andean Court of Justice opens the door for new applications of this type to be submitted before the Colombian National Trademark Office. It also encourages this Office to find the most appropriate way for the publication of this type of trademark applications.

Carmen Sánchez-Puelles