Wind in the sails for atypical trade marks in the EU - graphical representation following the recent EUTM reforms

New approaches to graphical representation
call for some creative thinking -
Ed Devlin's Singing Tree at theV&A

The following is a guest post from Roberto A. Jacchia and Giulia Beneduci (De Berti Jacchia Franchini Forlani in Milan).  They have some interesting thoughts on non-traditional trade marks and the impact of the recent EU trade mark reforms.  Here is what they have to say:

In today’s highly competitive markets, producers of consumer goods increasingly launch new marketing strategies, aimed at stimulating a broad array of sensory reactions, often based on innovative technologies.  Consequently, the commercial appeal of non-traditional trademarks has increased, and IP law has been compelled to address the manifold challenges involved by their protection.

In the abstract, all kinds of signs can amount to trademarks, and atypical marks are a multi-faceted and lively reality. Just to make some famous examples among EU registrations, one can think of the lilac/violet colour of the packaging of Milka chocolate (colour trademark), McDonald’s jingle “I’m lovin’ it” (sound trademark) or the Nokia video of a handshaking displayed on mobile phones when switching on (motion trademark).

However, non-conventional trademarks present difficulties in relation to the fulfilment of the requirements for registration. In general, they have often been excluded from registration, or thereafter declared invalid, usually because either (i) the applicant or proprietor was unable to represent them graphically, (ii) they were found to lack distinctive character, and/or (iii) they were considered an indivisible part or feature of the product.

One of the major changes introduced by the recent EU Trademark Reform – pursuant to Regulation (EU) 2017/1001 (New Regulation) and Directive 2015/2436/EU (New Directive) – addresses the concept of sign capable of registration as a trademark.  This directly impacts on the protection of atypical marks.

Graphical representation

The recent Reform abolished the original requirement of graphical representation of the sign.  Starting from 1 October 2017, in order to be validly registered as a EU trade mark, the sign must still be capable of being represented, but any appropriate form of representation is admitted, as long as it “enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor” (Article 4, letter b), of the New Regulation). The corresponding provision in Article 3, letter b), of the New Directive will need to be transposed by Member States within January 14, 2019.  Besides, another change introduced by the Reform is the express addition of colours and sounds to the exemplifying list of signs capable of being registered as trade marks (pursuant, again, to Article 4 of the New Regulation and Article 3 of the New Directive).

The requirement of graphical representation was conceived in order to define the mark and determine the precise scope of the protection afforded to its holder and, mirror-wise, of the rights of third parties. The Court of Justice of the European Union (CJEU) expressly connected the need for a clear and precise representation of the mark to that of legal certainty, not only towards the public and consumers, but likewise towards the authorities, as well as other economic operators. Reflecting the principles laid down by the CJEU in the Sieckmann judgment (12.12.2002, Case C-273/00), Recital (10) of the New Regulation and Recital (13) of the New Directive now provide that the trademark representation must be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”.

The Commission Implementing Regulation (EU) 2017/1431 (Implementing Regulation), also applying as from 1 October 2017, points out that the introduction of technical alternatives to graphical representation may be afforded by new technologies (see Recital 6) and (in Article 3) sets out a series of technical rules for the representation of certain types of trademarks when filing an application before the European Union Intellectual Property Office (EUIPO). 

For example, a multimedia mark (consisting of, or extending to, the combination of image and sound), must be represented “by submitting an audiovisual file containing the combination of the image and the sound” (Article 3.3, letter i), Implementing Regulation), while a hologram mark must be represented “by submitting a video file or a graphic or photographic reproduction containing the views which are necessary to sufficiently identify the holographic effect in its entirety” (letter j)). A table on the EUIPO website lists the most popular types of trademark, specifying their respective representation, whether a description is required and the format accepted by the Office from 1 October 2017.

What about smell, taste and tactile marks?

On the other hand, for certain “borderline” categories of atypical marks, the EU legal system seems not yet ready. Article 3.9 of the Implementing Regulation provides that the filing of a sample cannot constitute a proper representation, hence in practice impedes the registration, of smell, taste and tactile trade marks, because “the subject matter of protection cannot be determined with clarity and precision with generally available technology” (EUIPO Guidelines for Examination, Part B, Section 4, Chapter 2, Version of 01.10.2017). Actually, as specifically regards olfactory trade marks at EU level, the registration of “the smell of fresh cut grass” for tennis balls, filed in the nineties and then expired without renewal, altogether remained an isolated case.

What does the future hold?

On the whole, the EU Trademark Reform encourages the registration and protection of atypical trade marks, by “releasing” the representability requirement from its graphical declination. However, as some Italian legal literature recently observed, the requirement still applies in compliance with the demanding Sieckmann criteria, which continue to be referred to in the Recitals of the New Regulation as well as the New Directive.

Therefore, the impact that the Reform will have on non-conventional trademarks remains to be seen based on how the Courts and IP Offices, especially the CJEU and EUIPO, will implement the changes. A particular auspice among cutting-edge businesses, increasingly investing in scent marketing, seems to be that new methods of representation could be developed in the future with the progress of science, so that the evanescent, unstable nature of scent may then no longer prove an obstacle to registration.