One of the most important of the five senses, touch is said to be “the first sense developed in the womb and the last sense used before death”, moreover, this sense makes us identify what is real and can bring to our mind a certain connection with a product or company.
It is a fact that, companies are always looking for the “next feature” of their trademarks in order to attract new consumers, being the texture of a product packaging ideal suited, not only visually engaging and distinctive, but also stimulating for the sense of touch.
In light of the above, the texture of a product can be registered as a “tactile mark”, and in simple words, these marks, alternatively referred to as “texture marks”1, are the ones that capture the feel of a good, and are essentially distinctive to the consuming audience, being a characteristic feature of the trade dress or the packaging of the goods, which can be felt and not just seen.
It is important to notice that in Mexico, according to Federal Law for the Protection of Industrial Property2, a trademark is understood to be “any sign perceptible by the senses and capable of being represented in a way that makes it possible to determine the clear and precise object of protection, which distinguishes products or services from others of the same kind or class in the market”.
The above-mentioned Law, also refers that, it might constitute a trademark: sounds, smells, three-dimensional forms, the plurality of operational or image elements, including, among others, the size, design, color,arrangement of the shape, label, packaging, decoration or any other that, when combined, distinguish products or services in the market3, between others, nevertheless there is a loophole since it does not expressly provide the definition of “tactile marks” and how they must be graphically represented.
However, since article 171, refers that a trademark is understood to be “any sign perceptible by the senses”, We can file and obtain a registration for a “tactile mark” if we manage to prove examiners that the texture of a package and its feel is planned and remarkable, it is stimulating for the sense of touch, it can also be represented in a way that can determine the object of protection, and also has enough distinctiveness, or it has acquired it through its use in commerce.
For this reason, this paper will explore the latest developments in Intellectual Property, analyzing the main
challenges for claiming a “tactile mark”, such as the criteria of graphic representation, functionality and thatthey must not be a shape or texture of common use.
CHALLENGES FOR CLAIMING A “TACTILE MARK”.
When talking about “tactile marks” we face three special challenges, the first one consists that they must be correctly represented graphically, the second is that they must not have a functional value, and the third one is that they must be distinctive, namely that they are not a shape or texture of common use.
The need to keep certain signs available for use by all competitors in the market, affects the system of
registration of tactile marks, which often has to make up its shortcomings by the figure of secondary meaning or acquired distinctiveness in Mexico. On August 24, 2015, the Andean Court ruled during a preliminary interpretation on the tactile trademark consistent in the surface of the bottle “Old Parr”4, and said decision is the first ruling on an International Court of Justice on a tactile trademark.
This entails a new approach to distinctiveness that includes irregularity of usual shapes of goods or their
packaging, non-functionality or irregularity of shapes imposed by the nature or function of the product and shapes or other elements that give a functional or technical advantage to the product.
In relation to the non-traditional trademarks also named as atypical or non-conventional marks, the doctrine usually divides them into visible and non-visible signs; in the particular case of “tactile marks”, these belong to the group of non-visible signs5, and it is the surface that gives rise to their recognition and protection, because they have a particular and recognizable texture.
THE GRAPHIC REPRESENTATION REQUIREMENT.
The main challenge that non-visible signs face is the practical problem of the graphical representation, since the sign must be represented in a way that enables the competent authorities and the consumers to
determine the exact subject of the protection conferred to its owner.
In this sense, it is important to refer that Federal Law for The Protection of Industrial Property does not mention the exact way in which this type of non-traditional trademarks should be graphically represented.
In light of the above, we must take a look at other international legislations, such as “Regulations under the Singapore Treaty on the Law of Trademarks”6, in which provision number three, refers that when the
Trademarks Office considers that different views of the description of the product are still insufficient to show the details of the three-dimensional marking, it can request the applicant to file a specimen of the trademark or a two-dimensional photography.
It is necessary that we take as an example that “the Singapore Treaty” does not limit the graphical
representation of the trademarks to only two dimensions, but it applies to non-visible trademarks as tactile trademarks requesting an example of the texture of the mark.
It is also important to refer that the International Trademark Association (INTA) in 20067 adopted a resolution in favor of the recognition, protection and registration of tactile marks as long as they are sufficiently distinctive or have obtained this distinctiveness, through the use in the commerce, suggesting that they must be objected to a functionality test to prevent that the protection granted affects the free competition.
The Andean Tribunal8 refers that, in tactile trademarks, it is the particular surface of the product that gives it the recognition, protection and it could be graphically represented in a Braille relief, in which case, as long as there are more different representations of a tactile or texture trademarks it will be easier for Authority, to determine the protected elements and future disputes concerning the tactile or texture mark applied for registration will be avoided.
Moreover, in what refers to a graphical representation of a tactile trademark our suggestion would be to make a proper and detailed written description of the specific characteristics of the trademark, to exhibit photos, a specimen, and a digital reproduction in a Braille relief.
The simple written description of the tactile mark will help the examiner to determine in a first instance what we want to register, as well as certain characteristics of the trademark that do not appear in the graphics that represent the trademark.
In order to strengthen the description, we suggest filing a physical specimen of the object that contains the texture of the product that we want to protect, being the Trademarks Office the one that should allow the access to said objects and for last, to attach a Braille representation of the tactile mark being applied for registration.
Another main challenge that tactile trademarks face is that the texture must not have an advantage or
functional value9, since this might constitute that an Authority grants exclusive rights about a determined
texture that could create a barrier with potential competitors.
Therefore, before filing a tactile trademark we should discard that this texture is not common or usual in the market, such as simple bottle of water that it does not have any distinctive element that gives it a special characteristic in relation to the others offered in the market.
Nevertheless, if we consider registering a specific bottle of perfume to a lace added to this, or a specific
crumpled glass texture for a bottle of certain alcoholic beverage, we are talking about a distinctive element that accompanies those products.
THE COMMON USE TEXTURE.
This one requires that the sign that we want to register does not consist on the usual forms of the products or their packages10, being the common use shapes or textures those that are frequently used in the marked in relation to a specific type of products and as consequence of this, consumers do not relate said “forms” or “textures” with a specific business origin, given that in their minds these are related with the gender of the products and not with a specific competitor.
The above also implies that to protect the tactile elements of a product, it is also distinctive, either inherently distinctive or having acquired distinctiveness over time, for the use of marketing, and thus have achieved an acquired distinctiveness in the minds of consumers.
SOME EXAMPLES OF TACTILE TRADEMARKS.
Some success cases of tactile trademarks involve the correct description of the distinctiveness of the texture, as well as the graphical representation, as we can notice in the US registration No. 2624410, in which the description of the mark consist of “cotton textured paper wrapped around oval-shaped soap and tied with a silver-colored wire that is coiled a fastened to a semi-precious stone bead”11 for
international class 03, in relation to skin soaps.
Another example is trademark registration No. 3896100, the mark consists of “a leather texture wrapping around the middle surface of a bottle of wine, the mark is a sensory, touch mark”12 registered in international class 33 for wines. Later, this trademark registration was cancelled because registrant did not file an acceptable declaration under Section 8.
In Mexico, we do not have any precedents of the filing or granting of tactile trademarks, nevertheless, it would be interesting to know the criteria of the examiners if the marks are filled according to our
In conclusion, in the particular case of tactile trademarks we must take precaution of the textures that are of common use in a determined international class since they are not related by consumers with a specific
If we can prove examiners in charge of Mexican Trademarks Office that a tactile mark can be recognized by consumers by only the sense of touch, given the particular surface of the product, that this trademark can be graphically represented and that it is not a shape or texture in common use, we consider that we can offer a broad protection for products and trademarks that have in its texture an added value.
It is clear that the path to securing tactile marks is difficult, but the benefits of incorporating sensory branding elements into product packaging or with specific fabrics and considering them a return of the investments, cannot be fully realized without being able to own them with a proper registration before Authority, and as a result, prevent competitor from counterfeit them.
For last, this type of trademarks constitutes an opportunity to take a look at the legal loophole of the Mexican Federal Law of Protection of Industrial Property and to expressly refer that in the tactile trademarks as well as in other non-traditional trademarks the graphical representation could be filled by exhibiting in the trademark application the correspondent written brief that contains the description of the texture, a photo of all the angles of the product, a physical specimen of the object that contains the texture, and for last to attach a Braille representation of the tactile mark.
- 1 Kashishworld.com “The Undermined Domain of Tactile Marks”, Article of 2021. Page 1.
- 2 Federal Law for the Protection of Industrial Property, 2020. Page 53.
- 3 Ibidem.
- 4 “The Tactile or Trademark in the Andean Community: On the Preliminary Ruling 242-IP-2015 of The
Andean Court of Justice”. 2016. Page 114.
- 5 Ibid, Page 119.
- 6 “Regulations under the Singapore Treaty on the Law of Trademarks”, Article 2, numeral 1.
- 7 Op. Cit. Note 5.
- 8 Kexin Li, “Comment: Where is the right balance? Exploring the current regulations on Nontraditional
Three-dimensional Trademark registration in the United States, The European Union, Japan and China”,
Wisconsin International Law Journal, 2012, p. 24.
- 9 Op. Cit. Note 5.
- 10 Ibid, page 126.
- 11 United States Patent and Trademark Office, database.https://www.uspto.gov/trademarks/search
- 12 Ibidem.
Marisol Balandra Pérez