The future of trade marks: protecting unusual trade marks in the EU, Germany, and Sweden
As the trade mark world evolves, practioners continue to ask: what can be protected?
With new developments happening every day, what might become possible in future?
Per Lidman of Setterwalls and Dr Fabian Klein of Pinsent Masons recently presented a CITMA webinar exploring the intricacies of protecting unusual, non-traditional trade marks in the EU, Germany and Sweden.
They offered valuable insight for trade mark attorneys aiming to file applications for unusual marks.
Legal background and filing practicalities
A change in EU trade mark regulations in 2017 opened the door to applications for unusual trademarks such as hologram, 3D, motion, sound, multimedia, and position marks.
Previously, applied-for marks had to be represented graphically in a form that was “clear, precise, self-contained, easily accessible, intelligible, durable, objective”. Articles 31 and 4b of the EU TM regulation changed this, requiring simply that marks are “…represented in the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection”.
This change paved the way for applications via digital files such as sound files and video files, and the EU IPO has provided guidance on the types (MP4, MP3 and JPEG) and sizes (dependent on format but limited to 20MB for MP4 files, and 2MB for MP3 files, for example) of files needed for each type of unusual mark.
These changes were also subsequently implemented into German and Swedish law, but there are some nuances.
In EU applications, it is not possible to add a description of the mark except in a limited number of cases.
In Germany, however, it is possible to add a description of the mark to any kind of application that is not a conventional word mark, and for position marks providing a description is mandatory.
In Sweden, descriptions are allowed but are mostly voluntary and only required if the patent office finds it necessary.
Dr Klein also noted that, while applications for ‘smell’ and ‘touch’ marks can be filed under EU law, in practical terms this is not possible as there is no objective way of representing them.
However, in Germany there is a possibility of success, because if trade marks cannot be represented by any of the conventional means, a description can be provided.
This is limited to 150 words so it may struggle to communicate the detail of a smell or touch mark.
Unusual trade mark applications are still rare
There have only been 174 applications for unusual trade marks in the EU since 1 January 2023.
The most popular types of marks are 3D and colour marks, followed by position marks, which are popular in the transport industry. Most of the applications are proceeding successfully to registration.
The EU IPO has provided a very useful document advising on the examination of formal requirements and grounds for refusal.
Examples of unusual marks
Fabian and Per shared examples of unusual marks and how they have been assessed by the EU IPO.
This included the “Super Simon” multimedia mark, applied for by a Dutch trade mark firm as a test case seeking to clarify the registration requirements of such marks (Super Simon EU 018061546).
Initially rejected on the grounds of lack of distinctiveness, and that consumers would not remember all the details of the 20-second clip, and that there was no indication of the owner of the mark.
That judgement was overturned on appeal, with the judge ruling that it is not necessary for consumers to remember the whole clip, just parts of it, and that indication of the owner was not required.
As an example of an application for a mark that failed to proceed to registration, Dr Klein presented a 2016 application for a tactile mark applied for on a water faucet (Neoperl EU 015786544).
The trade mark was represented by a picture of the design and a description. The examiner and ultimately general court ruled that the tactile impression was not perceivable from the representation and the description did not clarify it.
If the applicant in this case chose to reapply now, following the changes adopted in 2017, they could choose to use a video file showing the tactile element of the mark and may have a greater chance of success.
However, Fabian contended that distinctiveness would still be a problem and the applicant would have more success choosing to apply for registration as a position mark.
Looking ahead: what marks might succeed in future?
Handbags presented as motor vehicles; buses and tube trains fitted with lashes travelling beneath giant mascara wands; these could both be registered as trade marks for bags and cosmetics, respectively.
Other examples discussed include the potential for registering avatars, dim lighting in retail outlets (think Hollister or Abercrombie& Fitch’s typical set-up), and even the movement made by influencer/personality Salt Bae when seasoning food.
Per’s research found that Salt Bae’s general recognition levels would be advantageous in supporting an application.
Questions for the future
With a view to the future of unusual trade marks, Per explored the issue of distinctiveness for marks that represent an advance in design and technology.
He looked at the example of Volvo cars, where an application for a motion mark based on a “Thor’s Hammer” light sequence in the LED headlights was rejected as the EU IPO said it did not succeed in creating distinctiveness.
This was in part because many other manufacturers use similar tactics, and although it is different to legacy headlight technology, the new technology is widely available.
Fabian and Per also raised the issue of complexity – whether complex unusual marks are cohesive and defined enough to function properly as trade marks.
However, the Board of Appeals in the Super Simon case concluded that “As long as the relevant public is able to identify the sign as a commercial origin, the length of the sign or the complexity of the individual elements are irrelevant”.
This case is already being used as precedent in other trade mark decisions under EU law.
Finally, they explored the scope of protection for unusual marks, using the example of an application for a Thunderball motion mark, which the EU IPO judged a risk of confusion with the UK TM word mark THUNDER BALL.
There is undoubtedly a great deal to consider when applying to register unusual trade marks. Fabian and Per recommend that attorneys think first about what they want to have protected and what it will be used for, and then decide what type of mark would offer the best protection.
Don’t register an unusual mark for its own sake.
They noted that there is an opportunity for early adopters to gain protection that lasts for at least ten years, so even if there are no immediate plans to use an unusual mark, it may be worth registering it as soon as the idea is conceived.
Finally, Per and Fabian encouraged the audience to be bold and creative in exploring unusual marks.