The difficulty of protecting tactile marks

Obtaining trade mark protection for a non-traditional sign can be challenging. One hurdle is how to represent the trade mark in the application. With the reform of EU trade mark law in 2017, the requirements have been eased in this respect.

Prior to the reform, protectable signs were only those --

… capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging. (Art. 4 of Regulation 207/2009)

The current regulation abandoned the requirement of graphical presentation and only requires the sign be capable of --

… 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. (Art. 4 of Regulation 2017/1001)

While this makes registration easier for some non-traditional trade marks, such as sounds that cannot be represented by musical notes and scores (e.g., a cat’s ‘meow’), other types of marks may still face difficulties. In its judgment Neoperl v EUIPO (Representation of a cylindrical sanitary insert part) the General Court had the opportunity to review the rejection of an application for a position tactile mark.

Background

On 1 September 2016, the applicant filed an EU trade mark application for the following sign --

In the application, the mark was referred to as a ’position tactile mark’ and described as follows:

The mark is a position tactile mark. Protection is claimed for a structure of circular, concentric, elastic lamellae with a height of a few millimetres, which is arranged on the entire surface of the end face of a cylindrical sanitary insert intended for water flow, is oriented outwards and protrudes from an inelastic base, the elastic lamellae being deformable by a finger’s touch against the base and parallel to the base. No protection is claimed for the rest of the contour of the insert shown in dashed lines in the illustration.

The trade mark was applied for ‘sanitary inserts, in particular jet regulators and jet formers’ in Nice Class 11. (Translations by the author from the German version, as neither the judgment nor the description of the trade mark is available in English.)

EUIPO rejected the application mainly on the ground that the application, insofar as it aims to register a tactile mark, is not sufficiently specific to be represented on the Register in accordance with Art. 4 of Regulation 2017/1001.

The Board of Appeal dismissed the appeal. Instead of reviewing whether the sign was represented in a sufficiently specific manner, it held that the sign lacked distinctiveness.

The General Court’s decision

Because the application was filed prior to the entry into force of the current law, the General Court found that the case must be decided under the ‘old’ law namely that the trade mark need to be represented graphically.

The Court examined ex officio the question (i.e., without the applicant raising the issue in its appeal), whether the Board of Appeal was entitled to reject the application because of a lack of distinctiveness, this without first taking a decision on whether the application contained a sign that was sufficiently represented. The Court’s clear answer is ‘no’.

The Court reasoned that the graphic representation has the particular purpose of defining the mark and its precise object of protection. In order to assess whether a trade mark lacks distinctive character, it must first be determined what the exact sign is and whether it is sufficiently represented.

EUIPO argued that this error by the Board of Appeal was ultimately of no effect because the Board of Appeal found that the mark applied for lacked distinctiveness in every manner that it could possibly be interpreted. The General Court did not accept this argument and held that the object of the application must be determined first.

On that basis, the Court found the mark applied for was not sufficiently represented graphically. According to the application for the mark at issue, protection is claimed both for the structure of the jet regulator and for the tactile aspect of the sign. The tactile aspect, however, is not apparent from the graphic representation in a clear and self-contained manner, but at most from the description of the sign.

However, a description may only help to clarify the subject and scope of the trade mark protection sought and must neither contradict the graphic representation nor raise doubts as to the subject and scope of this graphic representation. Since the picture of the trade mark does not show the tactile impression (how could it?), the description would actually expand the subject matter of the protection. Therefore, the General Court considered the trade mark to be insufficiently represented graphically. 

Comment

While the judgment deals with the situation under the previous trade mark regime in the EU, it can be applied to the current legislation. The object of protection must be clearly identifiable from the representation of the sign itself. A description may not extend the scope of protection (Art. 3(2) of Regulation 2018/626). The sign must be represented in any appropriate form using generally available technology, as long as it can be reproduced on the Register in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner (Art. 3(1) of Regulation 2018/626).

Generally, available technology does not allow conveying the tactile sensation of an object. This may change, especially if virtual reality gloves and suits become more advanced and in common use. Until then, tactile trade marks cannot likely be protected by way of registration in the EU.

As EUIPO’s Trade Mark Guidelines state:

It is currently not possible to represent the tactile effect of a certain material or texture in compliance with Article 4 EUTMR as Article 3(9) EUTMIR specifically excludes the filing of samples and the subject matter of protection cannot be determined with clarity and precision with generally available technology.

Still, this does not mean that these types of marks enjoy no protection. For instance, German law grants rights to trade marks acquired through use, and such signs need not be represented in the strict fashion required for registration of a trade mark. In infringement proceedings, a tactile trade mark can be established by submitting a sample of the sign to enable the judges to perceive the tactile impression.