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Protecting non–traditional trade marks

Ana-Maria Baciu and Andreea Bende of NNDKP examine the protection of unconventional trade marks, evaluating cases concerning a range of marks including those connected to motion, pattern and sound

Changes to trade mark law

Following the recent legal framework adopted at European Union (EU) level with the entry into force in October 2017 of the EU Regulation 2017/1001 on the European Union trade mark (EUTMR), a new definition was given to trade marks as objects of intellectual property. Thus, while the previous legal definition required trade marks to be capable of being graphically represented, in addition to distinguishing the goods and/or services of one entity from those of other entities on the market, the new provisions replaced the above requirement with the trade mark's capacity to be represented on the register (of European Union trade marks).

A similar change is also provided in the Directive (EU) no 2015/2436. Article 3 of the directive defines a trade mark as "any sign 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 competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor". These legal provisions are to be implemented by member states by January 14 2019.

The requirement of graphically representing signs is abolished, thus opening the path for registration as trade marks of a wider range of signs within the category of non-traditional trade marks. Historically, this category included sound, colour, shape and motion/hologram marks, as well as position and olfactory marks. Today, with the new legal provisions in place, the following categories of non-traditional trade marks exist:

  • shape marks;
  • position marks;
  • pattern marks;
  • colour marks;
  • sound marks;
  • multimedia marks;
  • hologram marks;
  • other marks (including those types which were not specifically listed in the legal text, such as, taste marks, smell/olfactory marks, layout marks, as well as tactile marks)

The abolishment of the necessity of graphically representing signs came with its own set of rules, and in order to be apt for representation in the register, the provisions set forth in Article 3 of the Commission Implementing Regulation (EU) 2017/1431 (EUTMIR), laying down the rules for implementing certain provisions of Council Regulation (EC) 207/2009 on the European Union trade mark, must be fulfilled. In line with these rules, the signs applied for protection after October 1 2017, can be represented in any appropriate form, using the available technology, as long as their reproduction on the register is clear, precise, easily accessible, self-contained, intelligible, durable and performed in an objective manner, enabling the examiners and the competent authorities, as well as the public, to ascertain the object of protection and the extent of the rights deriving from the trade mark's registration.

The new definition and its implementing provisions evidently allow a wider palette of signs to be used as trade marks, aiming to respond to a need which derives from future developments in the field of technology and entities claiming exclusive rights over various types of signs they use in the course of trade with their goods and services. Important practical issues exist in terms of how the signs are actually filed for protection, reproduced, depicted and/or described in the application in order to comply with the above set of rules.

Non-traditional trade marks

Article 3 EUTMIR sets forth specific rules to be followed by applications filed in relation to non-traditional trade marks, which must be accurately identified according to their type/category and ensure the satisfaction of the above–mentioned reproduction condition.

Sound marks are defined as one sound or a combination of sounds and must be filed for protection by submitting an audio file reproducing the sound or by an accurate representation of the sound in musical notation.

Motion or movement marks (namely, marks reflecting a change in the position of their elements) shall be filed together with a video file or using a series of sequential still images indicating the particular movement for which protection is sought.

Multimedia and holographic marks are filed together with audiovisual files, respectively video files or graphic/photographic reproductions sufficiently and clearly distinguishing the trade mark's features.

A pattern mark would consist exclusively of a set of elements that are repeated with regularity (following a pattern) and must be filed together with a reproduction evidencing the pattern of repetition.

Since the EUTMIR does not include any specific rules in relation to the other types of non-traditional trade marks, such as olfactory, taste and tactile marks, we are turning to the guidelines available on the website of the European Union Intellectual Property Office (EUIPO) and the relevant case law, which sheds some light on obtaining protection for these other types of non-traditional marks.

Cases involving non-traditional trade marks

In the decision rendered on December 12 2002, in the case C-273/00 in the proceedings brought by Ralf Sieckmann, the court ruled that an olfactory mark filed for protection by indicating its chemical formula would be only distinguishable for professionals in the field (i.e. chemists). Chemists would be the only ones capable of identifying the odour for which exclusive rights would be granted thus the condition of enabling the public to accurately ascertain its object of protection would not be fulfilled.

Another example derives from the decision rendered on October 27 2005, in the case T-305/04 brought by Eden Sarl. The General Court concluded that, even if filed together with a graphic representation of the smell (i.e. an image of the strawberry), a description of the smell or a combination of both the graphic representation of the smell and its description, the elements of subjectivity in identifying unequivocally and precisely the object of protection would not be eliminated.

Along with the technical constraints faced by applicants wishing to protect non-conventional signs as trade marks, the chances of success upon undergoing the examination is difficult to assess. After October 1 2017, a wave a new non-traditional applications were filed before the EUIPO. Most are pending examination today.

For example, Bang & Olufsen applied for the registration of a motion trade mark, as EU application no 017280264 filed on October 2 2018, for goods in class 09, by submitting a video of a hand depicting a particular movement they wish to protect. This application continues to be pending examination before the EUIPO. It is shown below:

Another example comes from Red Bull, which filed on October 19 2017, the EU motion trade mark application no 017364481 featuring a video of a small airplane. The application was filed for activities in class 41. This is also pending examination.

Position and pattern marks appear to be more frequent and undergo faster examination procedures. Some of the applications that were filed before the EUIPO after the new legal provisions were introduced in October 2017 have already matured into registration. For example, the below position mark was registered as EU trade mark no 017437261 and recently granted, on March 1 2018, for goods in class 25 (i.e. footwear). It protects the position of two parallel oblique strips intersected by a perpendicular strip, displayed at the rear outer upper part of a shoe:

The pattern marks depicted below filed on November 2 2017 and November 3 2017 in the name of Cath Kidston Limited, under application nos 017421827 and 017427345 are granted protection for goods in classes 18, 24 and 25:

Also, an interesting multimedia application was recently filed by Soremartec under no 017868267 as of March 2 2018, for goods in classes 29 and 30, in the form of a video depicting a stylised rhythmic beating heart in black and white, accompanied by a characteristic sound:

Another example deriving from EUIPO relevant case law is represented by the EU application no 016432874 as of March 3 2017, filed by Iveco for a sound mark filed with the below graphical representation, and accompanied by an audio file, which was rejected by the EUIPO examiners on the basis of the absolute grounds set forth by Article 7 (1) b) EUTMR. The examiners considered that the sound (which the examiner interpreted as evoking the sound of a roaring engine) is likely to be perceived by the audience to which the goods at issue (in class 12) are addressed, as a characteristic feature of such goods and not as a sign clearly distinguishing their origin as deriving from the applicant.

In defending the application, the applicant claimed that the office's interpretation of the mark is inaccurate, since it, in fact, represents an overlap of frequencies resulting in an artificial futuristic sound and has appealed this refusal decision to the EUIPO Board of Appeals. The appeal is currently pending.

Lastly, another example is taken from a refusal decision that was issued by the EUIPO on October 16 2017, in relation to an application for the motion EU mark filed (as per the images below) under no 016433369 as of March 3 2017 in the name of D ET VE ET ÜRÜNLERI GIDA PAZARLAMA TICARET ANONIM SIRKETI, designating services in class 43 of the Nice Classification. In the decision, the EUIPO examiner considered that the image of a chef preparing meat with a pinch of salt is devoid of any distinctive character in relation to the services applied for in class 43.

The examiner thus concluded in this case that the mark's representation "is unable to convey any message that can be remembered by consumers as it will merely be seen as a nothing more that chef performing one of the more elementary tasks in the preparation of food" adding, "whilst the sign applied for may attract the attention of consumers, it will not provide them with any specific information or clear message regarding the commercial origin of the services." The applicant claims that the examiner failed to assess correctly the specific and overall distinctive features of the mark, and the chef's unique facial features and personal style should have been taken into account, including the fact that he is wearing sunglasses and the technique in which he is salting the meat, which departs from the standard approach used for such operations. This should be regarded as contributing to the memorable character of the motion mark, allowing consumers to identify the commercial origin of the services for which the application was refused in class 43. It should be noted that this motion application was granted protection by the EUIPO examiners for goods in classes 25 and 30.

It is clear that when it comes to the examination of non-traditional trade marks, the authorities continue to rely, in addition to the current legal framework, on the existing relevant case law available in the EU. However, the examination of these types of trade marks (also reflected in the examination decisions we have referred to above) appears to have shifted even more towards relying upon the subjective perception of the examiner regarding the particular sign filed for protection. Both the EUIPO, as well as national offices in member states need to adapt to the technical challenges arising from non-traditional applications. They also need to amend the approach taken to evaluating the specific features of non-conventional signs and how their distinctive character is interpreted and applied to goods and services offered in a market landscape which is continuously changing and employing more and more innovative marketing techniques.

Ana-Maria Baciu
  Ana-Maria Baciu has 19 years of experience in international and domestic business law. She heads the firm’s IP and pharmaceutical and healthcare practices and co-heads the gaming and consumer protection practices. She assists clients in various industries (automotive, gaming, industrial and manufacturing, pharmaceuticals and healthcare, retail and consumer goods, technology, tobacco and telecommunications and media). She is a regular contributor to specialised publications and lectures on IP and gaming matters. A licensed European trade mark and design attorney, she is a member of the Romanian National Council of Industrial Property Attorneys and the Bucharest Bar.

Her professional affiliations include the International Trademark Association (member of the Anti-counterfeiting Committee), International Association for the Protection of Intellectual Property, European Communities Trademark Association and MARQUES.

Andreea Bende
  Andreea Bende is a member of the Romanian Chamber of Patent Attorneys and has ten years of experience in IP, with a focus on rights administration, prosecution and contentious matters in industries such as pharmaceuticals, tobacco, fast-moving consumer goods, automotives, fashion, media and telecommunications. Her expertise includes trade mark, design and copyright dispute resolution, managing and filing applications for action with the Romanian National Customs Authority, domain name disputes and IP transactions.

Her professional affiliations include the International Trademark Association, International Association for the Protection of Intellectual Property, European Communities Trademark Association and MARQUES.


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