Multimedia trade marks: EUIPO says that “Super Simon” is distinctive

According to the EU Trade Mark regulation (EUTMR) it is possible to register multimedia trade marks, i.e. those consisting of or extending to a combination of image and sound.

The case

On 7 May 2019 Dutch company Chiever B.V. filed an application for registration of a multimedia trade mark consisting of a 22-second video featuring super-hero “Super Simon” going on holiday in comic book style. The application was for goods and services in classes 16, 33 and 41 (books, wine and cultural and relaxation activities).

On 4^th February 2020 (the decision is available in Dutch), the EUIPO examiner refused the application due to lack of distinctiveness pursuant to art. 7 (1)(b) of the EUTMR. In short, the examiner found that the sign was not perceived as a badge of origin due to the following considerations: (1) the complexity of the video; (2) the fact that the clip did not contain products and services clearly identified; (3) the identity of the manufactures was not clear; (4) the clip did not provide a clear origin of products/services as the usual spot for television; and (4) Super Simon lacked a sufficient link with the products and services applied for.

On 7^th March 2023, the EUIPO Board of Appeal overturned this refusal and found the mark to be distinctive. The Board also provided useful clarification on the requirements for registration of multimedia marks. The decision is in Dutch but a machine English translation is available here.

First, the Board of Appeal confirmed that, in general, if at least one element (sound or image) of the multimedia sign is distinctive, the whole multimedia mark will be distinctive.

Secondly, multimedia marks are necessarily complex signs. The examiner therefore erred in noting that the relevant public would not perceive the sign as a guarantee of origin, in particular because the public would forget many elements of the sign, thus overcoming the complexity argument . The Board held that the main character of the video “Super Simon” is distinctive and that the relevant public will remember that it runs away to a holiday destination.

Thirdly, the examiner considered that the sign should be analysed as an advertisement for television and that it would not identify company of origin of the products/services. Such an analogy with advertisements was also rejected. The Board of Appeal recalled the case law (T -310/8, T-387/6) according to which it is not necessary for a trade mark to convey precise information as to the identity of the manufacturer of the goods or the provider of the services.

By taking a more flexible approach with regard to validity of multimedia marks, the Board held the trade mark distinctive and concluded that:

Consumers may not have previously been accustomed to assigning a function of origin to a combination of images and sounds. This has changed with the digital evolution. As also indicated in the Common Communication on new types of marks, there is an increase in the number of signs combining images and sound used as part of market strategies, which will lead consumers to perceive them more as indications of commercial origin. The applicant also rightly points out that the multimedia mark consists of moving images and sounds to which modern consumers are entirely accustomed to their mobile phone. 

According to the Board, 

The mark applied for does not only have original features (although they are not necessary), but the video also enables the public to distinguish the goods and services in question from those with a different commercial origin.

Thoughts on validity and enforcement of multimedia trade marks

The digital world is bringing new questions for IP offices regarding the classification and examination of multimedia trade marks. New questions arise for applicants too, especially regarding how to sustain brand presence in the virtual world. One should bear in mind that innovative types of trade marks must always meet the general requirements of every trade mark, notably distinctiveness, but also that a rather flexible approach looks to be on the way according the decision at issue.

It will be also interesting to see to what extent multimedia trade marks will be successfully enforced through traditional litigation procedures. The assessment of whether a third party’s multimedia sign may infringe a registered multimedia trade mark seems not an easy one to undertake, especially when considering the degree of distinctiveness of a multimedia trade mark and its scope of protection (i.e., simply with regard to the duration of the whole registered video and to the allegedly infringing one). 

Picture of the cat: courtesy of Elisa and Otto from Italy.