The criteria for registering an european trade mark have been substantially amended since the 1st of October 2017 by the entry into force of Regulation (EU) 2017/1001 governing the European Union trade mark.
Of these, it should be noted that the susceptibility of graphical representation of a trade mark as an essential criterion in the registration proceedings has been removed.
Thus, by removing the requirement that the trademark ought to be graphically represented upon application for registration, the possibility of registration of European non-traditional trade marks was created and so were the conditions to harmonize the effects of technological developments in business with the relevant intellectual property legislation.
Under such conditions, signs that are dully represented in any appropriate format (JPEG, MP3, MP4, etc.) may be submitted for registration using generally available technology. Nevertheless, trade mark applications are still subject to the remaining requirements applicable, such as the condition that the representation of the trade mark is clear, precise, easily accessible, intelligible, durable and objective.
Due to these changes, applications may be submitted for the registration of dynamic, three-dimensional, sound, hologram and, possibly, the most complex, multimedia trade marks.
According to Article 4 of Regulation 2017/1001:
An EU trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:
(a) distinguishing the goods or services of one undertaking from those of other undertakings; and
(b) being represented on the Register of European Union trade marks (‘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.
What is a multimedia trade mark?
A multimedia trade mark is defined as a “trade mark consisting of or extending to the combination of picture and sound”.
The EUIPO also provides that it accepts the filing of such trade marks only in MP4 format and that the file must have a size of up to 25MB.
Nonetheless, practice may be the only thing able to explain the obvious problems with the distinctiveness of multimedia trade marks and how said distinctiveness shall be analyzed by the examiner during the registration procedure.
Distinctiveness is still of the essence and, therefore, a multimedia trade mark must also meet the requirement to be able to distinguish the products/services of one undertaking from those of another, and the consumer must still be able to link the trade mark to the products/services that it protects.
To this date, there have been 41 European Union multimedia trade mark applications filed with the EUIPO.
It remains to be seen to what extent the proprietors of multimedia trade marks will be able to invoke an infringement of their rights on the part of other proprietors of an identical type of trade mark or of traditional trade mark proprietors (what kind of arguments would an opponent, proprietor of a word/figurative trade mark, invoke in case of filing of an opposition against a multimedia trade mark?)
Following the same line of thought, it remains to be seen what counterfeiting of such trade marks will consist of and how the court will analyze such situations on a case-by-case basis. What will the risk of confusion will consist of (how will it be analyzed, will the length of the multimedia trade mark be taken into account, will the case be the same in regard to a large number/small number of items available in the visual field, how will the sounds that make up the aural part of the trade mark affect it, or the colors or movements which cause visual interaction between the trade mark and the consumer).
All of the abovementioned questions may boil down to only one – essential – question, which is:
What is the extent of the protection of multimedia trade marks?
Analyzing such already registered trade marks with the EUIPO, we can conjugate an idea as to which the answer to the question above may be.
As example, the following trade marks were considered by the EUIPO to meet all of the relevant criteria stipulated by Regulation 2017/1001:
- EUTM 017451816, registered on 28.02.2018 for goods such as flags, small flags.
– the trade mark has a length of 16 seconds and is comprised of a complex animation resembling an advertisement.
- EUTM 017868267, registered on 14.08.2018 for goods such as pastries, fruits and those related.
– it has a length of 1 second and it contains an animated heartbeat
With the evolution of both society and digital technologies, the effect of the latter on business has become more and more poignant, only a very small number of businesses making it only in physical commerce without a presence in the on-line
The registration of a multimedia trade mark may be the key-point of growth for your business, but in orderd to rise the chances of success of such a complex procedure, our advice is to always consult with a professional in the field of intellectual property rights.