A brand is one of the most valuable intangible assets for any company, not only because it identifies its products or services, but also because it serves as a vehicle for building reputation, conveying values, and fostering consumer loyalty.
But not all trademarks are the same, and a distinction is increasingly being made between those considered traditional—such as names and logos—and those considered non-traditional, which include shapes, colors, sounds, movement, or even specific placements of the mark on a product.
These non-traditional trademarks offer new opportunities for differentiation, but they also entail greater legal and strategic challenges when it comes to protecting them. In this guide, we explain the different types of trademarks, how they are classified, and what you need to consider if you want to successfully register a non-traditional trademark.
What is a trademark, and why is it important to protect it?
A brand is a symbol that distinguishes a company’s products or services and sets them apart from those of its competitors. More than just a logo or a name, a brand represents a company’s commercial identity and becomes a vital asset for its market positioning.
For a trademark to be registered, it must meet two fundamental requirements:
- Distinctiveness: The trademark must be sufficiently distinctive to identify the origin of specific goods or services; it must not be generic, merely descriptive, or excessively simple (such as a dot), nor should it be overly complex (such as a movie).
- Representative capacity: It must be possible to represent it clearly and precisely in the registry so that consumers and competitors know exactly what is being protected.
The advantage of registering a trademark is that its protection can potentially be indefinite, provided it is renewed periodically (every 10 years in the European Union and Spain), unlike other industrial property rights such as designs, whose protection in our country lasts for 5 years and can be extended to a maximum of 25 years.
Classification of brands: traditional and non-traditional
Brands can be divided into two broad groups: traditional and non-traditional. Below, we describe each type with illustrative examples.
1. Traditional brands: the most common ones
These are the ones consumers think of when they hear the word “brand,” as they represent the options that are best known and most widely used by companies. They include:
- Word marks: consisting of words, letters, numbers, or a combination of these in standard characters. Example: the name of a company or product.
- Figurative marks: graphic symbols without text. Example: logos without verbal elements.
- Mixed trademarks: a combination of word and figurative elements in a single mark.
2. Non-traditional trademarks: definition and examples
Non-traditional trademarks are used to protect visual, sensory, or presentation elements that do not fit into conventional categories but may still be capable of fulfilling the distinctive function of a trademark.
2.1 Three-dimensional trademarks
They protect the distinctive shape of a product or its packaging, provided that it deviates from standard designs and is not solely based on a technical or functional purpose. Examples include iconic perfume bottles, as well as unique shapes of handbags, shoes, or beverages.
Three-dimensional trademarks also include trade dress, which protects the overall appearance of a retail establishment (shelf layout, aisles, color schemes, etc.) when that configuration serves to identify a commercial source.
2.2 Position Markers
They protect the specific placement of a symbol on a product. Some examples of this type of non-traditional trademark are:
- The red soles on Christian Louboutin shoes
- Distinctive stitching on the pockets of Levi’s pants
- The Three Stripes of Adidas
2.3 Pattern Marks
They feature the systematic repetition of a graphic or ornamental motif. Take Louis Vuitton, for example, which has succeeded in creating a highly recognizable pattern through the use of its logo, or Burberry with its classic “Check” pattern.
2.4 Color Trademarks
They can refer to a single color or to a combination of colors in specific proportions (both in terms of color distribution and the relative weights of each color).
Registering a trademark based on a single color poses a particular challenge, due to the limited availability of shades and the need to avoid monopolies on basic colors. For this reason, only those trademarks that have achieved a high degree of recognition and association in the market are granted registration.
Some companies that have achieved this include Milka, with its traditional purple color, and 3M, with the classic yellow color of its Post-it notes.
2.5 Sound Marks
They include melodies, sounds, or jingles that identify a product or service—for example, Mercadona’s sung slogan or the iconic MGM lion’s roar.
2.6 Motion Marks
They protect visual animations that depict a moving symbol, but without sound.
2.7 Multimedia Brands
They combine video and audio into a single file. An example would be the opening sequence of a TV show or streaming platform.
2.8 Hologram Marks
They preserve three-dimensional visual effects such as glare, reflections, and contrasts that vary depending on the viewing angle.
2.9 Scent, taste, or touch marks?
Although applications have been filed both at the national level and within the European Union, these trademarks have not yet been accepted in practice, as they do not meet the requirement of clear, precise, objective, and lasting representation. Therefore, at present—and at least until technology exists that allows for their objective assessment—it is not possible to register smells, tastes, or tactile sensations as trademarks.
Legal Challenges Facing Non-Traditional Brands
Non-traditional trademarks present specific challenges when they are filed and examined by intellectual property offices, because their form of expression often differs from traditional signs and from what we have come to recognize as a trademark.
These challenges stem from three key factors:
1. Brand function
The sign must fulfill its function as a trademark; that is, it must—as we have seen—have representational capacity (it must be capable of being clearly and easily perceived) and distinctive capacity (it must identify the business origin of the product or service).
Furthermore, although in theory the requirements are identical to those for traditional trademarks, it is now required that the sign differ from what is customary in the sector to which it belongs. This means that it must not be a shape, color, or arrangement commonly found on the market, but must stand out for its originality or exclusive use.
2. Acquired distinctiveness (secondary meaning)
During the trademark application process, it is possible to demonstrate that the mark has acquired distinctiveness through prior use in the market. This is known as “secondary meaning”: because consumers have repeatedly seen that sign associated with a specific business, they recognize it as indicative of a specific source.
3. Absolute Prohibitions
Special care must be taken with certain absolute prohibitions that are frequently applied to non-traditional trademarks. In particular, when the sign consists exclusively of a shape or feature that:
- It is dictated by the nature of the product—that is, whether it is a standard or necessary form of the product that all competitors in the industry must use.
- It is necessary to achieve a technical result. For example, a shape that serves a practical function of the object, such as the cap of a lipstick, whose shape is determined by its opening and closing mechanism.
- It adds substantial value to the product—that is, a form or feature that the consumer perceives as an element that is attractive solely from an aesthetic or commercial standpoint.
Trademark or Design? How to Choose the Best Protection Strategy
In certain industries, it is often necessary to determine which form of protection is most appropriate: whether to register a sign as a design or as a trademark.
Both options are perfectly valid, but they have different legal statuses:
- An industrial design protects the external appearance of a product and is therefore ideal for protecting packaging or specific product shapes. However, it has a limited term of 5 years, which can be extended to a maximum of 25 years.
- A trademark, on the other hand, protects a sign that identifies a business’s origin, which means that when consumers see it, they can directly associate it with a specific company. For this reason, it is particularly well-suited for protecting names, logos, and also non-traditional trademarks that, thanks to their originality and/or market recognition, have distinctive character. Unlike industrial design protection, trademark protection can be extended indefinitely, provided it is renewed every 10 years.
The key is to analyze each specific situation and determine the most appropriate form of protection based on the commercial objectives and the nature of the mark.
How to Successfully Protect Non-Traditional Trademarks
Non-traditional trademarks allow companies to protect distinctive and innovative assets that form part of a company’s visual or sensory identity. However, registering them requires a very careful legal strategy, with special attention paid to proving distinctiveness, use in the marketplace, and overcoming absolute prohibitions.
At ELZABURU, we help our clients identify the most appropriate form of protection for each asset, taking into account its role in the market and the applicable regulations in each jurisdiction. Therefore, we are committed to designing customized strategies that are tailored to the specific needs and objectives of each case.
Cristina Velasco, Senior Associate in the Trademark Practice Group at ELZABURU.