Since its inception, the harmonised national EU trade mark legislation – and later the EUTM system – has opted for a flexible approach to non-traditional trade marks. In principle “any sign” capable of indicating origin may constitute a trade mark, resulting in several non-traditional marks being registered. These include colours, shapes, sounds, smells, patterns, holograms, movements, three-dimensional signs, and combinations of the same.
The latest EU trade mark reform package further bolsters the position of non-traditional marks. Colours and sounds are now expressly stated to be potentially registerable signs, and – crucially – the requirement of graphic representation has been removed, largely to accommodate registration of non-traditional marks (Ref. 1).
Despite the clear intention of allowing registration of non-traditional marks, maintaining those registrations has often proved difficult, and recently a number of well-known marks have been invalidated. For example:
Yet the common factor that links these marks for their consumers is that they are very, sometimes instantly, recognisable. So, what are the key points to consider when applying for and defending the registrations of non-traditional marks?
Ensure the trade mark you are applying for is sufficiently clear and precise
The requirement for marks to be represented graphically has been removed in favour of a requirement that marks be represented in a clear and precise manner. Under the new legislation (codifying the well-established Sieckmann principles), a sign must be capable of being “represented, in a manner which enables the competent authorities and public to determine the clear and precise subject matter of the protection afforded to the proprietor“.
This has led the EUIPO to provide comprehensive revised guidelines detailing what is required for a variety of non-traditional marks to be registered. However, there is little legal certainty in this area (indeed, aspects of the EUIPO’s guidelines have already been amended), and applicants who have followed previous EUIPO and UKIPO guidelines in registering their non-traditional marks have seen their marks invalidated.
Therefore new applicants for non-traditional marks should carefully consider the manner in which they will represent and describe their trade mark. Current non-traditional marks owners are also well-advised to review their marks critically and, if appropriate in light of the developing case law, consider a revised filing.
Most non-traditional marks are likely to be considered by the registries as not inherently distinctive. Applicants should therefore consider collecting solid evidence showing acquired distinctiveness of their marks.
Show acquired distinctiveness
Some of the key hurdles in proving acquired distinctiveness include:
- Showing use of the mark at issue
Non-traditional marks can be difficult to represent or describe in a way that meets the Sieckmann criteria, even if you might think that you know it when you see it. This produces an increased risk that a relevant authority may misconstrue the mark and thereby potentially reduce its scope of protection.
Proving that such a mark has acquired distinctiveness through use is particularly difficult, as it inexorably leads to the question of what “use” qualifies. It is therefore vital to ensure that the relevant authority correctly understands how consumers perceive the mark.
- Showing that consumers perceive the mark as designating origin
As non-traditional marks are often used in conjunction with other traditional marks (usually word and logo marks), it can be difficult to prove that the non-traditional mark alone is perceived as designating origin.
To overcome this, non-traditional EUTM trade mark applicants or registrants will usually best be served by survey evidence that demonstrates consumer recognition of the non-traditional mark on its own as indicating origin without other marking. In the UK, the Courts remain less impressed by such survey evidence, and very little weight (if any) will be given to it.
Regardless of jurisdiction, non-traditional mark applicants or registrants should also carefully consider how such marks are used in the wider context of a marketing strategy. Ideally, non-traditional marks should be used in an independent and prominent manner, and should appear as much as possible on packaging, point-of-sale materials and in advertisements.
- Showing acquired distinctiveness throughout the relevant territory
EU case law has also made clear that EUTM applicants and registrants for non-traditional marks must give specific thought as to whether their evidence shows that the mark has acquired distinctiveness throughout the EU. Presenting evidence from a representative number of Member States (even if these together form a substantial part of the EU population) will not be enough to meet this requirement.
The Opinion of the Advocate General which was issued in April confirms that while it would be unreasonable to require proof of acquired distinctiveness for each individual member state, the trade mark applicant cannot simply leave out entire regions. The Opinion can be seen to demystify “market comparability” for evidence of distinctive character. Further guidance is likely to be forthcoming once the CJEU gives its ruling in the KitKat shape mark case on appeal from the General Court of the EU. For now, EUTM trade mark applicants and registrants should ensure they collect sufficient evidence for each Member State to prove acquired distinctiveness in that Member State.
“EU case law has also made clear that EUTM applicants and registrants for non-traditional marks must give specific thought as to whether their evidence shows that the mark has acquired distinctiveness throughout the EU.”
Take note of absolute grounds for exclusion
Under the new EUTM Regulation and the EU Trade Mark Directive 2015, the absolute grounds for exclusion from registration that previously applied only to the shape of a sign now include any “other characteristic” of the sign. Where the shape or another characteristic of a sign results from the nature of the goods, is necessary to obtain a technical result, or gives substantial value to the goods, that mark will not be registerable.
This adds an additional obstacle for some non-traditional marks, such as olfactory marks, which will often consist of a form that results from the nature of the goods. Applicants and registrants for non-traditional marks should critically review their applications and registrations in light of the amended scope of the exclusions.
Keep abreast of Brexit
In the short-term, Brexit is unlikely to have a significant impact on non-traditional marks. The reforms set out in the EU Trade Mark Directive 2015 are required to be implemented into national law by 14 January 2019 – sneaking in just before “Brexit Day” on 29 March 2019. Absent significant opposition, the reforms, including the removal of the requirement for graphical representation, should be codified in the Trade Marks Act. The UKIPO’s recent consultation paper on the implementation of the EU Trade Marks Directive 2015, which stated that “until the UK formally leaves the European Union all of its obligations remain in force“, leaves little doubt about this.
Following “Brexit Day”, unless other provision is made, the UKIPO and the English Courts will cease to be bound by CJEU decisions. Over time, the interpretation of the harmonised legislation by the UK and the EU may diverge, and this could affect the different registries’ attitude towards non-traditional marks. If one of the arguments in favour of Brexit is that it encourages the UK to break free of the EU stranglehold, then promoting a friendlier regime for the use and registration of non-traditional marks would be one way to do it.
Ref. 1: Changes were introduced into the laws of EU Member States under Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the member states relating to trade marks (Member states have been given three years to implement this Directive) and to the EUTM under Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark.
A version of this article first appeared in Intellectual Property Magazine and has since been updated to include mention of the recent Advocate General’s Opinion in the KitKat shape mark case.