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Unconventional trade marks in the 21st Century




Trade mark proprietors continue to push the boundaries of protection for non-traditional trade marks. Simon Barker of Freeths explains how their marks can be protected in Europe and the UK

The definition of a trade mark under Article 2 of the (old) EU Trade Mark Directive 2008/95/EC read as follows:

A trade mark may consist of any signs capable of being represented graphically, particularly words, including person names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or service of one undertaking from those of another.

That definition has now been changed by the recently revised Directive, EU 2015/2436, and the associated Council Regulation (EC) No. 207/2009 as amended by Regulation (EU) 2015/2424, relating to the EU trade mark.

Article 3 of Directive EU 2015/2436 reads as follows:

A trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:

a) distinguishing the goods or services of one undertaking from those of other undertakings; and

b) being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.

Moreover, Recital (13) to the recast Directive states that, "A sign should therefore be permitted to be represented in any appropriate form using generally available technology, and thus not necessarily by graphic means, as long as the representation offers satisfactory guarantees…", namely as to the criteria established by Sieckmann v Deutsches Patent-und Markenamt discussed below, including the requirements of clarity and precision.

Indeed it will be seen that to some extent the new definition codifies the principles derived from the case law discussed below. However, the one practical and essential difference between the old definition and the new is that it will no longer be a requirement that marks are represented graphically.

The changes to EU trade marks will apply from October 1 2017 and member states shall have until January 14 2019 to implement the changes into domestic law. However, in respect of the UK it remains to be seen what impact the UK's decision to leave the EU may have on these provisions and trade mark law generally.

In the meantime, it seems clear that a sign which is capable of being graphically represented will most probably be sufficiently "represented" under the new definition as it was under the old. Colours, sounds (now specifically referred to in the new definition) and shapes have all found acceptance on that basis but the requirement for graphical representation has proved more difficult for smells and tastes. The new definition might change that.

Smells and tastes

Perhaps the leading decision of the Court of Justice of the EU (CJEU) was the case of Sieckmann, which concerned an attempt to register a smell. Whilst it was accepted that a trade mark did not in itself have to be perceived visually, what was required was a "representation" that was sufficiently clear, precise and objective, self-contained, easily accessible, intelligible and durable; so that a trader would be able to determine the precise nature of a mark on the basis of its registration. In that case describing the smell as "a balsamically fruity scent with a slight hint of cinnamon" or as a chemical formula was not sufficiently clear and precise. Depositing an odour sample neither constituted a graphic representation nor was it sufficiently stable or durable either.

So, while the requirements of clarity and precision, are as important under the new definition as the old, finding a graphic representation has proved to be difficult. Therefore the removal of that requirement opens up the possibilities for protection; but a new form of "representation" will need to be devised if smells and tastes are to be accepted.

Sounds

In Shield Mark v Joost Kiss the CJEU found that the Sieckmann criteria, and the requirement of graphical representation, were met for sound marks where the sign was represented by a stave divided into measures and showing, in particular, a clef, musical notes and rests whose form indicated the relative value and, where necessary, accidentals. Descriptions of sounds, onomatopoeia and sequences of notes (without more) were not acceptable because they were not sufficiently clear and precise.

The EUIPO Guidelines for Examination of European Union Trade Marks cites the following example of an acceptable graphical representation:

Description: The six-note musical signature is constructed in the Mixolydian mode, which corresponds to the common major scale with a flatted or diminished seventh; (this scale may be sounded on the piano by playing all the white notes from any G to the next G above; the theme consists of the following pitch sequence; starting on the third degree of the scale, up a minor third to the fifth, up a perfect fourth to the tonic, down major second to the flatted seventh, down a minor second to the sixth, down a major second to the fifth. The rhythmic configuration is three quarter-notes followed by the three eighth-notes, the last of which is sustained in varying degrees of duration depending upon the particular arrangement or musical context in which the theme is embedded.

It follows that the difficulties over graphical representation with smell marks do not apply to musical marks but may apply to other sound marks. Moreover, Rule 3(6) of the Implementing Regulation for the Community Trade Mark Regulation provides that where registration of a sound mark is applied for, the representation of the mark shall consist of a graphical representation of the sound, in particular a musical notation and where the application is made electronically it may be accompanied by an electronic file containing the sound. The amending Regulation (EU) 2015/2424 does not appear to have made any changes to Rule 3(6). However, it seems entirely plausible in the absence of a requirement for graphic representation that it may be possible in the future to file using only an audible electronic file. Indeed, one might argue that would be preferable for users of trade mark registers who would then be able to determine the nature of the mark by hearing it. Furthermore, in such circumstances non-musical sound marks such as onomatopoeia may be more amenable to registration.

In addition to these considerations is a common requirement, present in the old definition as in the new, that the sign must be capable of distinguishing goods or services of one undertaking from those of other undertakings. The issue is of particular relevance in the context of shape marks as with colour marks but a detailed discussion would take more space than this article permits.

Colours

Nevertheless, in Libertel Groep v Benelux-Merkenbureau the CJEU dismissed an appeal from the Benelux Office refusing to accept an application for the colour orange (in respect of telecommunications goods and services). The refusal was on grounds that, in the absence of evidence, the mark was devoid of distinctive character. While Libertel highlighted this as a specific difficulty for colours that are not spatially delimited (that is, one or more colours not represented as applied to goods or to premises), it confirmed that merely reproducing the colour on paper would not satisfy the Sieckmann criteria. However it was said these may be satisfied by designating the colour using an internationally recognised identification code such as Pantone or RAL.

In Heidelberger Bauchemie the CJEU introduced an additional requirement for marks consisting of colours or combinations of colours in the abstract; without contours or shades. It required that the representation include "a systematic arrangement associating the colours in a predetermined and uniform way". While the CJEU offered no example the UK Trade Mark Manual suggests that the following representation of EUTM no. 2177566 would fall within the guidance:

Goods/services: Cl 6,11,19 and 20

Description: The distribution and ratio of the colours to each other is 50-50, whereby the colour blue runs horizontally above the colour red, forming a striped whole.

Indication of colour: Blue: Ral 5015, red: Ral 2002.


More recently the Court of Appeal in the UK considered a challenge by Nestlé to acceptance of an application by Cadbury (Société des Produits Nestlé v Cadbury) which was for a sign that was represented as follows:

The colour purple (Pantone 2685 C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.


The specification of goods was: "Milk chocolate in bar and tablet form; milk chocolate for eating; drinking chocolate; preparations for making drinking chocolate."

The issue before the Court of Appeal was the sufficiency of the description. Citing the Sieckmann, Libertel and Heidelberger cases Sir John Mummery, in allowing the appeal, found that the word "predominant" opened the door to a multitude of different visual forms as a result of its implied reference to other colours and other visual material not displayed or described in the application and over which the colour purple may predominate. Moreover, the description did not constitute "a sign" that is "graphically represented" in the sense of a single sign rather than multiple ones which are neither graphically represented nor described with certainty or precision.

Given that the reasoning in this ruling extends beyond the requirements of graphical representation it is unlikely the decision would have been any different under the new Article 3 definition but it illustrates the need to describe the sign being claimed with clarity and precision.

Shapes

The Court of Appeal in Cadbury also cited the case of Dyson v Registrar of Trade Marks which concerned a shape mark, described as consisting of "a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation". The representation was a picture of a vacuum cleaner with a collection chamber (although not obviously transparent). Again, in that case it was found that the description could cover a multitude of different appearances.

Interestingly, the Court of Appeal in Cadbury underlined the point that competitors would not be able to tell from inspecting the register the full scope and extent of the registration, and that the lack of certainty would offend against the principles of fairness by giving a competitive advantage to Cadbury; putting Nestle and other competitors at a disadvantage.

In a conjoined appeal (but in a separate judgment) the Court of Appeal also considered an appeal by Mattel, which produces the well-known game of Scrabble. The appeal was against a summary judgement in the High Court which found that Scrabble's tile mark was invalid. The tile mark description stated that it "consists of a three-dimensional ivory coloured tile on the top surface of which is shown a letter of the Roman alphabet and a numeral in the range 1 to 10". The tile was depicted as shown above.

The respondent argued that the description encompassed a range and variety of graphically distinct representations as illustrated by the following permutations:

In finding against Mattel, and consistent with the Cadbury case, the Court of Appeal in JW Spear & son & Ors v Zynga found that the tile mark was not "a sign" for these reasons and that there was no graphic representation of a sign which met the requirements of clarity, precision and objectivity.

The Court dismissed Mattel's argument that evidence of acquired distinctive character and public recognition would lend sufficient certainty and precision for the representation to be recognised as "a sign". Again it is unlikely the position would be different under the new Article 3 definition.

Retail store designs

These cases illustrate some difficulties to be encountered in describing the scope of protection for colour and shape marks. However it seems not so much a question of being overly specific as being clear and precise as to what sign (singular) is being described. For, in Apple Inc v Deutsches Patent- und Markenamt the CJEU confirmed that a retail store design may be registered as a trade mark with the representation of a design alone, namely without indicating the size or the proportions of the layout of the retail store, provided the sign was capable of distinguishing the services of the applicant from those of other undertakings.

Movement marks

This subject would not be complete without some mention of movement marks. In itself a movement mark might be thought of as a series of signs when represented graphically, yet the character of such marks render them singular in nature. Nevertheless, in order to meet the Sieckmann criteria the EUIPO Examination Guidelines state that the graphic representation must be accompanied by a description. The description must clearly explain the movement for which protection is sought and must be coherent with what can be seen in the representation of the sign. It is said that the number of stills will depend on the movement concerned. The shorter of the examples given for acceptable signs is this one:

Description: The mark is an animated sequence with two flared segments that join in the upper right portion of the mark. During the animation sequence, a geometric object moves upwards adjacent to the first segment and then downwards adjacent to the second segment, while individual chords within each segment turn from dark to light. The stippling in the mark is for shading only. The entire animated sequence lasts between one and two seconds.

As with sound marks removal of the requirement of graphic representation offers an opportunity in the future to simplify the representation of movement marks by allowing electronic files containing the moving image to be filed electronically and viewed electronically by users of trade mark registers.

New possibilities

While the new Directive and EUTM Regulation codifies a number of existing principles from case law, as it applies to unconventional trade marks, allowing signs to be represented in ways not necessarily by graphic means may open up new possibilities for more innovative and sophisticated non-traditional brands. No doubt this area of trade mark law will continue to be fascinating, and when implemented Article 3 of the recast Directive will surely give rise to more interesting cases.

Simon Barker
  Simon Barker specialises in all fields of IP law. He is an experienced litigator and trade mark practitioner. With a practice focused on brand protection, management and enforcement across all channels and media, Freeths’ team offers a full service including filing and prosecution of trade mark and design applications, litigation, applications for injunctive relief, search and seize orders, domain name disputes, online take downs, criminal prosecution, and advice on advertising regulation and marketing law.


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