Novel opportunities in EU Trade mark Registrations
Following an evaluation of the EU trade mark system by the EU commission the EU trade mark texts have been amended. These amendments cover the Trade mark Directive (TMD) and the European Union Trade mark Regulation (EUTMR). Member States have up until 14 January 2019 to transpose the relevant provisions of the Trade mark directive however the changes brought about through the EUTMR are already in force with the latest batch of amendments coming into force on 1st October 2017.
The most noteworthy amendments include:
New terminology which has been in force since 2016, and has changed the Community Trade Mark (CTM), Community Trade Mark Regulation (CTMR) and Office for Harmonization in the Internal Market (OHIM) to European Union Trade Mark (EUTM), European Union Trade Mark Regulation (EUTMR) and European Union Intellectual Property Office (EUIPO) respectively.
Non-Graphical representations: Article 4 of the regulation has removed the graphical representation requirement resulting in the following text:
A trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colors, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:
Distinguishing the goods or services of one undertaking from those of other undertakings; and
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.”
This opens up new avenues for trademark registrations which should not be confined to just the traditional word mark or figurative logo format, at least for registrations at EUTM level, (the provisions of the local Chapter 416 are still to be amended to reflect the directive’s provisions). This follows a codification excerise of previous CJEU case law known as the Sieckmann criteria which held that trade mark representations should be: “clear, precise, self-contained, easily accessible, intelligible, durable and objective. The new system is referred to by the EUIPO as a what you see is what you get system which is meant to facilitate searches on the EUTM register and increase legal certainty for its users. Naturally the EUIPO register and search tools are expected to adapt and improve following the possibility of new registrations.
Applicants should also be interested to note that multimedia trade marks can now be filed through a simple upload of an mp4 file with no description required which should further expand the avenues of registration for dynamic and animated signs.
Trade mark classification of Goods and Services: The IP translator case has also been incorporated in EUTMR’s article 28 which means that the wording of the relevant trade mark classes of goods and services are to be interpreted literally. The class headings of the Nice Classification system must still be used however these have to correspond to the requirement under Article 28(2) and 28(3):
(2) The goods and services for which the protection of the trade mark is sought shall be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that sole basis, to determine the extent of the protection sought.
(3) For the purposes of paragraph 2, the general indications included in the class headings of the Nice Classification or other general terms may be used, provided that they comply with the requisite standards of clarity and precision set out in this Article.
Applicants have to ensure that the goods and services they claim are now specifically worded to their particular subject matter, this may involve a more detailed inspection of the particular use in the course of trade requirement and the specific activities for which the applied for trade mark is put to use. You can get in touch with us to ensure your trade mark registration and consequently your brand is protected in the best possible manner through an accurate draft of the goods and services specifications.
Absolute Grounds of Refusal: The wording of Article 7(1)(e) has been amended to reflect a wider exclusion following the removal of the graphical representation requirement in Article 4. Article 7(1)(e) now reads as follows:
(e) signs which consist exclusively of:
(i) the shape, or another characteristic, which results from the nature of the goods themselves;
(ii) the shape, or another characteristic, of goods which is necessary to obtain a technical result;
(iii) the shape, or another characteristic, which gives substantial value to the goods;
This new addition of the term characteristic further widens the scope of the exclusion under Article 7 which may pose an additional difficulty to the registration of non-traditional marks which may be seen to have been facilitated on face value through the removal of the graphical representation requirement. Possible registrations of colour marks, combination marks and even smell marks may be negatively affected with the introduction of “another characteristic” wording exclusion and urgent CJEU interpretation on this point is required. Such registration may not be able to show their sign is distinctive if the feature for which protection is being sought can be classified as being essential to the product itself and may not even reach the distintive stage since the marks will be rejected on absolute grounds. Until further clarification on this point, potential applicants interested in registering a non-traditional mark should choose to register such signs in combination with other elements which are not excluded under Article 7(1)(e).
EUTM 017265356 – The iconic Nokia start-up tune.
Sound Marks have long been accepted as trade marks even before the new EUTMR as they were capable of being graphically represented through a representation of the particular notes displayed as sheet music.
EUTM 017492513 – Castrol Oil Animation.
Motion Marks are moving frames resulting in a video clip or animation whilst Multimedia Marks also feature sounds. These are a new kind of EUTMs enabled by the EUTMR.
