[author: Athena Poysky]
Since 2016, European trademark law has gone through its most substantial reform since the implementation of the (former) Community trademark system in 1996. One of the changes that took effect as of 1 October 2017 opened up the opportunity for trademark owners to obtain protection for new types of marks as these no longer require a graphical representation.
The fact that marks will no longer require graphic representation implies that trademarks which could only be represented electronically can now be accepted. This removes one of the hurdles for non-traditional trademarks such as position, sound, motion, multimedia and hologram marks which, for example, can now be filed in MP3 or MP4 file format. Bear in mind though that the representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective, in line with the ‘Sieckmann’ decision (Case C-273/00).
The impact for EUTM applicants is that the list of types of marks accepted before EUIPO has been extended and now includes word, figurative, shape, colour, sound, position, pattern, motion, multimedia and hologram. Needless to say, protection here may still present challenges as marks must satisfy the requirement for distinctiveness and for representation – albeit not graphic – pursuant to Article 4(b) EUTMR. This means smell marks, for example, are still extremely difficult to register.
The new types of marks and representation requirements now come under Article 3 of the Implementing Regulation of the EUTMR and the definitions and means of representation for each of the different types of (new) mark can be found in the Common Communications of the representation of new types of trade marks.
Now that some months have passed since the entry into force of the new Regulation, this post takes a look at the EUIPO register to identify any filing trends for new types of marks.
Since August 2017, twenty-six position marks have been applied for. Of these twenty-six applications, slightly over half of them were filed for classes related to clothing and accessories (classes 25, 9 and 18), such as the examples shown below, which indicates that these marks appeal most to the fashion industry.
This type of mark was previously filed within the broader category of figurative marks. Also frequent in the fashion industry, less pattern marks than position mark applications have been filed over this period. Just ten applications were filed, none of which by giants in the fashion industry as might have been expected, to cover their iconic patterns. Two examples are shown below.
Similarly, just sixteen motion marks were filed over the period, four by a leading consumer electronics brand and others by big multinational companies in the fast moving consumer goods and energy sectors.
Although this is considered to be a “new” type of mark, of the ten applications for hologram marks filed, only one is from 2017, whilst the others date back to 2000 – 2013.
Of the “new” types of marks, only one is really brand new: the multimedia mark, which is defined as “a trade mark consisting of, or extending to, the combination of image and sounds”. It is to be expected then that the fewest applications have been filed for this type of mark, just five applications in 2017.
Certification marks have also been included as a new type of mark at EU level, although they have already been registrable at a national level in the EU. It is defined as a mark that is “capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified.” In other words, an EU certification mark relates to the guarantee of specific characteristics of certain goods and services.
Certification marks have proved to be much more popular. There are currently ninety-one certificate marks filed, of which four have been withdrawn whilst the remainder are filed, under examination or published. It will be interesting to see how the EUIPO assesses the distinctiveness of this types of marks.
Takeaway
Aside from certification marks, the current registration practice before the EUIPO suggests that EUTM owners do not presently have a noticeable appetite for filing these new types of mark (even where well-known marks already registered under different categories would potentially be more accurately protected by re-filing as one of the new types of mark). Strong cases for such filings could include marks filed as “other” in the fashion sector, notably the Louboutin red outer sole which would be more accurately protected as a position mark. As mentioned above, iconic fashion patterns, currently registered as figurative marks, would potentially secure more accurate protection as pattern marks and storyboards of images would do well to be re-filed, securing multimedia mark protection.
