The likelihood of confusion test in Taste Marks

Hidayatullah National Law University

Raipur, Chhattisgarh

Submitted to:

Mrs. Debmita Mandol

(Faculty, IPR Hons-II)

Submitted by:

Saurabh Bara

Roll No.-142 Section- C

Semester- 9, B.A.L.LB.(Hons.)
 Acknowledgements

This research venture has been made possible due to the generous co-operation of various
people and to name them all would be impractical and is beyond the scope of this section.
This project wouldn’t have been feasiblewithout the help of my mentor Mrs. Debmita
Mandol had always been there by my side whenever I needed her aid. She is the one who
provided me with direction and the relevant resources. The vast plethora of information
which is present at our library has one of the biggest contributions into this piece of work,
and I owe a lot to the college administration for the provision of such remarkable
facilities.

Yours sincerely
Saurabh Bara
Roll no - 142
Semester - 9

Contents
RESEARCH METHODOLOGY....................................................................................................4

OBJECTIVES..................................................................................................................................4

Introduction......................................................................................................................................5

Registrability of Taste Marks..........................................................................................................6

Graphical Representation of Taste Marks...................................................................................6

Distinctive character of the Taste Mark.......................................................................................7

When can taste marks be protected.............................................................................................9

Likelihood of confusion test in Taste Marks.................................................................................10

Conclusion.....................................................................................................................................11
RESEARCH METHODOLOGY

The method of research adopted for the project is the analytical and descriptive method.

The texts that were used for the project include articles, research papers and news given in
various websites as well as online journals

OBJECTIVES
1. To analyse the registrability of taste marks under the Trade Mark Act, 1999.
2. To understand the application of “Likelihood of confusion” test within Taste Marks.
3. To suggest changes which would make current trademark law more suitable for
protecting taste marks.
Introduction
Companies are vying for a 5 sense marketing technique wherein they are trying to appeal to each
sensory organ of the consumer so as to increase brand attachment. Such brand attachment would
make the consumers more loyal to a particular brand rather than the current trend of celebrity
endorsements as the consumers would be directly attached to the brand rather than being
attached with the celebrity endorsing it. Therefore, companies are vying for obtaining taste mark
protection to better cement their brand image.

Taste marks, called also flavour or gustatory marks, are the scarcest of all the sensory marks. The
taste can represent a strong incentive leading the consumer to the source of origin, but is
perceived, similarly as smell, very subjectively. Unlike other sensory marks, the taste marks have
not so far convinced of their capability to serve as indicators of trade origin, which is the
essential function of any trade mark. However, with time there may well arise a situation
wherein taste marks would be more frequently applied for and registered.

This research project shall analyze the registrability of taste marks and how the likelihood of
confusion test, as applied under section 11 of the Trade Marks Act, 1999 and Section 29 of the
Trade Marks Act, 1999 would respond to a situation where the two marks to be compared are
taste marks. The research project would then give recommendations which would help obtain a
better framework for registering and protecting taste marks within the intellectual property law
framework.
Registrability of Taste Marks
According to Section 2 (zb) of the Trade Marks Act, 1999, "trade mark means a mark capable of
being represented graphically and which is capable of distinguishing the goods or services of one
person from those of others and may include shape of goods, their packaging and combination of
colours."

Therefore, in order for a “Taste Mark” to be capable of registration the taste mark must satisfy
these two criterions:

 Graphical Representation
 Capable of Distinguishing

Graphical Representation of Taste Marks

The pioneer among all the non-traditional sensory trade mark cases in the EU was Sieckmann1in
which the CJEU adopted the seven criteria for sign representation also referred to as the
Sieckmann Seven. The court held that Article 2 TMD “must be interpreted as meaning that a
trade mark may consist of a sign which is not in itself capable of being perceived visually,
provided that it can be represented graphically, particularly by means of images, lines or
characters, and that the representation is clear, precise, self-contained, easily accessible,
intelligible, durable and objective.”2 These criteria represent a set of requirements that has to be
fulfilled in order to be successful in registering any non-visual trade mark.

According to the position expressed by WIPO Standing Committee on the Law of Trade Marks,
Industrial Designs and Geographical Indications (SCT), the graphic representation of taste marks
should not be that problematic. In the point of view of the SCT the criterion could be simply
“satisfied by using a written description of the taste and an indication that it concerns a taste
mark.” 3 However, the written description must be clear and precise.4 The application of a Dutch
company for “smell of a fresh cut grass” in connection with tennis balls was registered in 2000.5
Therefore, if the requirement of graphical representation for smell marks can be fulfilled with a
mere description of the smell, the same would also be fulfilled with respect to taste marks.

1
Case C-273/00 Sieckmann v Deutsches Patent- und Markenamt [2003].
2
Ibid, para. 55.
3
http://www.wipo.int/wipo_magazine/en/2009/01/article_0003.html .
4
Ibid
5
Vennootschap onder Firma Senta Aromatic Marketing, CTM 428870(Oct. 11, 2000) [expired].
Distinctive character of the Taste Mark
Capability of a being distinctive is the essential characteristic of the sign seeking for registration.
Nevertheless, even if a mark fails the test of distinctiveness, it can still be proved that the mark
has acquired a distinctive character throughout use that has been made of it before filing of the
application. If the acquired distinctiveness is proved, the trade mark may be registrable. This is
vital for all the sensory marks, which could scarcely be distinctive by nature, but could be shown
to have become distinctive i.e. distinctive by nurture. 6 For example, the CJEU held in Libertel7
that a colour per se could only rarely be inherently distinctive, but that it can acquire
distinctiveness through use.8The decision pondered also about the issue of depletion and was
notable from the competitors’ perspective, because the Court departed from its “usual reasoning
to consider the interest of competitors in availability of signs only for the assessment of the
descriptive character of marks.”9In the case at hand, it was clear that the colour was not
descriptive of the services offered, but was devoid of distinctive character. Therefore, the Court
took into account not only the consumers’ view but also the competitors’ aspect.10

In an EU case a taste mark application was preliminarily rejected on the basis of functionality,
but An Office Action11 in an astonishing attempt of diligence asked for a sample, which the
examining attorney would be able to actually taste. 12 TTAB affirmed the refusal on the grounds
of functionality and failure to convey the message of trade origin.13 Furthermore, it was held in
the New York Pizzeria case14 that flavours are not capable of being inherently distinctive and
therefore have to prove acquiring of secondary meaning in order to be granted trade mark
protection.15 Thus, it is apparent that taste marks on their own cannot possess a “Distinctive
character”

6
Laurie, G., et al., Contemporary Intellectual Property: Law and Policy, p. 589.
7
Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2004].
8
ibid, para. 66.
9
Kur, A., Strategic Branding: Does Trade Mark Law Provide for Sufficient Self Help and Self Healing Forces?, p.
213.
10
ibid.
11
Office Action of July 14, 2010 for U.S. App. Serial No. 85,007,428.
12
Gilson LaLonde, A., Gilson, J, Getting Real With Nontraditional Trademarks: What’s Next After Red Oven
Knobs, the Sound of Burning Methamphetamine, and Goats on a Grass Roof?, p.194.
13
In re Pohl-Boskamp GmbH & Co. KG,106 USPQ2d 1042 (TTAB 2013).
14
New York Pizzeria, Inc. v. Syal et al, No. 3:2013cv00335 (2014), pp. 13-14.
15
ibid.
The power of a taste mark to acquire enough distinctiveness so as to ensure that the mark is
capable of distinguishing between the goods and services of one service provider from would
depend upon the extent of use of the said trade mark. It is stated that taste being a highly
developed human sensation, a human can definitely identify and differentiate between two
distinct tastes. Therefore, it is possible that mere taste of the object can help in differentiating
between the source of one goods and services provided that such a taste has acquired
distinctiveness and secondary meaning within the market. However, the main issue with respect
to registration of taste marks is that taste marks are more often than not of a “functional nature”.

Doctrine of functionality
The USPTO puts a lot of emphasis on the enforcement of the functionality bar. A trade mark is
to be declared functional “if it is essential to the use or purpose of the article or if it affects the
cost or quality of the article.”16 Finding of functionality often serves as a bar towards the
evidence of distinctiveness and has been regarded as a threshold issue to secondary meaning.17

The EU’s position on functionality is somewhat ambivalent. The CTMR accepts that in
particular cases there is a need to keep the signs free for competition and thus acquired
distinctiveness cannot be established.18 Article 7(e) CTMR stipulates under absolute grounds for
refusal that signs which consist exclusively of the shape resulting from the nature of the goods
themselves, the shape of goods which is necessary to obtain a technical result and the shape
giving substantial value to the goods shall not be registered as CTM. Since literal comprehension
of the article confines the functional aspect to shapes, it is not entirely clear whether the principle
applies to other signs having similar detrimental effect on competitors.19

An aesthetic functionality is a more specific defence used when the aesthetic feature of a product
is itself the mark that company is seeking to protect. The doctrine is based on a premise that the
visual appeal of a trademark must be free for all to imitate, because it is an essential ingredient in

16
Qualitex, supra, at 165 (quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850, n. 10).
17
Winckel, E., Hardly a black-and-white matter: Analyzing the validity and protection of single-color
trademarkswithin the fashion industry, p. 1020.
18
Kur, A., Strategic Branding: Does Trade Mark Law Provide for Sufficient Self Help and Self Healing Forces?, p.
197.
19
Kur, A., Strategic Branding: Does Trade Mark Law Provide for Sufficient Self Help and Self Healing Forces?, p.
198.
the commercial success of a product and restricting its use would hinder fair competition within
marketplace.20

OHIM21 rejected the pharmaceutical company Eli Lilly’s attempt to register the taste of artificial
strawberries noting in its decision , “Any manufacturer… is entitled to add the flavor of artificial
strawberries to those 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…” A similar attempt by N.V.
Organon to register an orange flavor for pharmaceuticals was rejected by the USPTO 1. As the
Trademark Trials and Appeals Court pointed out, it is difficult to define how taste can act as a
trademark when consumers only taste goods after purchase. Furthermore, in the New York
Pizzeria case22 the plaintiff had claimed a trademark over the taste of its Pizza, it was commented
while referring to the N.V. Organon judgment that if the hurdle for protection of taste marks is
high for trademarks when it comes to the flavor of medicine, it is far higher—and possibly
insurmountable—in the case of food. The reason given was that the main attribute of food is its
flavor, especially restaurant food for which customers are paying a premium beyond what it
would take to simply satisfy their basic hunger needs. Therefore it was held that flavor of food
undoubtedly affects its quality, and is therefore a functional element of the product.

When can taste marks be protected

In my understanding, any product which is of an edible nature i.e. meant for human consumption
cannot be utilized as a taste mark because of the broad nature of the functionality doctrine. Thus,
a taste mark may arise with respect to products which are not meant for human consumption. An
example of such products maybe a pen, as it is seen that there is a general practice of people
unconsciously placing a pen within their mouths, if a distinctive taste can be provided to such a
pen then the same maybe given trademark protection as a taste mark if the same is capable
enough to distinguish between the goods of two or more manufacturers. The tip of a spectacle
can be another example of a possibly protectable taste mark as it can also be tasted but not
consumed.
20
Vidackovic, V., Christian Louboutin v. Yves Saint Laurent: “Trademark use” Stomps its Red Heels on
“Likelihood of Confusion”, p. 465.
21
Case No. R 120/2001-2
22
New York Pizzeria, Inc. v. Syal et al, No. 3:2013cv00335 (2014), pp. 13-14.
Likelihood of confusion test in Taste Marks
In a hypothetical scenario, given the laws as on date remain the same, the application of the
likelihood of confusion test as laid down under Section 11 of the Trade Mark Act, 1999 would
pose a great number of difficulties.

The first and foremost being that the current requirement of “graphical representation” of a mark
would mean that under Section 11 of the Trade Mark Act, 1999 the registrar would have to rely
upon such “Graphical representation” of the taste in determining as to whether there exists a
“likelihood of confusion”. Taste being extremely subjective cannot be always precisely defined
enough for the registrar to make such a comparison. As noted by Californian IP attorney Mr.
Prettyman: “The wide range of genetic ability to taste various compounds combined with age
and culture related considerations makes an adequate description likely impossible at any stage
of technology.” Therefore, the written description of a taste mark can only be precise to a degree
and not an exact description of the taste, posing several practical difficulties if in the future the
Registrar is overburdened with a number of such taste mark applications.

The second issue with respect to application of the likelihood of confusion test as applied under
Section 29 of the Trade Marks Act, 1999 had been pointed out In Re Organon, “it is difficult to
define how taste can act as a trademark when consumers only taste goods after purchase.”23 The
key function of trade marks is to identify and distinguish goods or services of one trader from
another and providing that the consumers generally have no access to a product’s flavour before
making a purchase, the flavour does not serve to distinguish the product in that way. 24 There can
thus be a situation in which an unauthorized person reproduces the taste mark of a taste mark
proprietor and the proprietor is unable to restrain such usage as there would be no “likelihood of
confusion” as interpreted in Section 29 of the Trade Marks Act. In such a situation, all taste
marks would run the risk of becoming generic marks because the current Trade Marks Act, 1999
would practically confer no protection upon them, it would merely formally recognize them as a
Trade Mark. As such their only utility would be as a marketing tool, a tool which can be utilized
by others without any interference by the present trademark laws.

23
In re N.V. Organon, 79 U.S.P.Q.2d 1639 (T.T.A.B. 2006).
24
Anderson, C., Baseer, N., Jones, P., Strategic Intellectual Property Protection in Franchise Systems: Beyond
Trademark Registration, p. 9.
Conclusion
Through the course of this research project we’ve observed that taste marks can obtain
registration if they meet the criteria of having a precise written description and having acquired
distinctiveness within the market while not being of a functional nature. However, the main issue
with respect to taste marks would arise in the latter stage wherein two taste marks would need to
be compared. The issue of applying the test of likelihood of confusion under section 11 of the
Trade Mark Act, 1999 can be resolved if the following practical suggestion is implemented:

 If the registrar believes that the written description of a taste mark is similar with that of
the written description of a prior taste mark then the registrar may call upon a hearing
wherein he shall be provided samples of both such taste marks. Therefore, the step of
“Trademark objection reply” would have to be coupled with the “Trademark opposition
proceedings”.
 A special provision has to be enacted which would negate the requirement of “Likelihood
of confusion” for proving a case of infringement with respect to taste marks. Instead a
provision maybe introduced which states that a person would be infringing another
person’s taste mark if the latter taste mark “reminds the consumer of the taste mark of the
earlier proprietor”.

If these suggestions are incorporated then taste marks may become commercially viable.