Non-traditional trademark, an innovative way to identify your brands

15 May 2023 | Newsletter

Jose Juan MendezMendez Cortes, SC., Mexico

Progress consists in renewing oneself“-Miguel de Unamuno. This quote defines the significance that non-traditional trademarks have acquired for businesses, which are expressed through sounds, smells, flavors, and textures being perceived by one or more of the human senses.

Nowadays, we have had shopping experiences as consumers through these kinds of trademarks, by visiting a store with a characteristic smell, hearing a lion roar at the beginning of a movie or visiting a cafeteria anywhere in the world and distinguishing the same by its appearance, these sensory forms have helped us to identify the origin of the goods and services we receive.

Indeed, the evolution in media consumption has led businesses to reconsider their strategies for positioning their goods and services. Additionally, companies must deal with lifestyle changes, concern for the environment and the changes in communication media. Thus, past market strategies do not influence today’s consumers in the same way.

Traditionally, trademarks are constituted by visible signs (words, images, slogans) that distinguish goods and services of the same species or classes in the market. However, being challenged with such a competitive and constantly evolving market, new classes have emerged to create positive and lasting experiences through the stimulation of the senses in consumers, influencing their purchasing decisions.

In view of the above, traditional legal provisions recognizing trademarks by their graphic representation have been limited by the development of these new signs with distinctive capacity. The entry into force of the Singapore Treaty on the Law of Trademarks, reconsidered the criteria of those signs that can be used as differentiators between the commercial offerings of companies moving away from usual systems, particularly recognizing non-traditional trademarks worldwide.

These new trademark signs have been incorporated gradually in several legal systems around the world. In Mexico, international commitments and major technological changes created the necessity for a modern legal framework raising major reforms in our nation’s trademark legislation.

According to data published by the Mexican Institute of Industrial Property[1], from August 2018 to date, 43 holographic signs, 124 scent signs, 191 sound signs and 3670 trade dress applications have been requested. However, few of them have obtained a Registration.

Although non-traditional trademarks continue to be limited in disparity with traditional trademarks, their incorporation into Mexican legislation has gained relevance and their challenges continue, since it is necessary to spread their use among Intellectual Property rights holders. It is necessary to indicate that Non-Traditional Trademarks are new ways of associating goods and services amongst consumers and that they can incorporate an additional distinctiveness to their brand portfolio strengthening their commercial strategy.

Currently, the evolution of marketing and technological achievement has allowed the development of new methods of linking trademarks with consumers. Recent studies reveal that 78% of consumers assumed that enjoying the store environment plays a key factor in choosing to shop online, and 8 out of 10 consumers worldwide would recommend a store if they found sensory elements to be enjoyed.

The distinguishing function of a trademark can allow the distinction of a corporate identity allowing companies to benefit from strategies that include the use of signs that stimulate purchasing decisions through senses. Promoting the development and innovation in these business strategies will allow suppliers to keep up with market tendencies and being present in consumer’s purchasing choices.

Finally, from our practice we support Industrial Property rights holders by defending legal protection for such Non-Traditional Trademarks for providing commercial advantages against their competitors.