June 1, 2009
We are all familiar with traditional trade marks such as COCA COLA or the NIKE swoosh device. These days, all kinds of devices, shapes, colours and even sounds are registered as trade marks. The unwary trader may unknowingly infringe someone else’s trade mark if he does not perform the appropriate trade mark checks prior to launching a product.
This article examines special types of trade mark registrations and the difficulties in checking whether or not a product may be infringing a registered trade mark.
Louis Vuitton has registered the leather look of their Epi-Leather handbags. The registration is for the leather look in different colours as shown below:
The trade mark is described to be the “ridges and valleys” applied to the surface of the products. A cautious trader wishing to sell products having a similar leather look may not be able to locate Louis Vuitton’s mark on the trade mark register as the mark does not appear in a search conducted using the term “leather”. Even searches conducted using the terms “ridge” and “valley” did not yield the Epi-Leather trade mark. As it is not easy to locate this trade mark, many traders may be in infringement unknowingly. A search on the Internet will show that many traders are offering Epi-Leather look handbags for sale. Even though these handbags may not use the famous LOUIS VUITTON name, they are still considered counterfeit goods as they infringe the Epi-Leather trade mark.
Another fashion house which has registered what appears to be a surface covering is Hermes International. It has registered the following mark:
This trade mark is described as a “stripes pattern”. The mark was located through a search using the term “stripes” and “H”.
Embellishments on products
Fashion houses have also registered as trade marks the various embellishments found on their goods. Examples of these include the following:
The use of these embellishments, whether in a two dimensional or three dimensional form, will infringe these registrations. For example, the use of a three dimensional button resembling Louis Vuitton’s “Flower Quatrefoil” on a handbag will be an infringing use.
Hermes International had also sought to register its keyhole knobs, lock and Birkin handbag designs as trade marks in Singapore. These applications (reproduced below) have been abandoned, but Hermes International may always file another application for the same designs.
Colours have also been registered as trade marks. These include Seven Eleven’s colour scheme used in their retail outlets, and BP’s green used for their petrol station.
Even sounds have been registered as trade marks, for example, the Nokia tune and the Ricola jingle.
Criminal and civil proceedings may be commenced for infringement of trade marks. Trade mark owners may obtain a search warrant to raid premises and to seize infringing goods. This can cause much disruption to business, embarrassment as well as loss of profits. To minimise the risk of infringing special trade marks like the ones highlighted above, businesses should ensure that comprehensive trade mark searches are carried out prior to launching new products.