On 1 October 2017, an additional set of rules concerning EU trademarks under EU Regulation 2015/2424 amending EU Regulation 207/2009, and codified under EU Regulation 2017/1001 (hereinafter EUTMR), came into effect.
The former provisions required that, in order to obtain registration, a trademark had to be capable of: i) being represented graphically; ii) distinguishing the goods or services of one undertaking from those of other undertakings.
By abolishing the requirement of graphical representation, the reform aims at facilitating the registration of non-traditional trademarks such as sound, colour, pattern, motion, multimedia and hologram marks.
According to the amended legislation, a trademark can be registered if it is capable of: a) distinguishing the goods or services of an undertaking from those of other undertakings; b) being represented on the Register of EU trademarks, 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 (Art. 4 EUTMR).
More specifically, trademarks shall be represented in any appropriate form using generally available technology, and thus not necessarily by graphic means, provided that the representation is “clear, precise, self-contained, easily accessible, intelligible, durable and objective” (the so-called Sieckmann criteria).
Art. 3 of EU Commission Implementing Regulation 2017/1431 (EUTMIR) provides detailed rules for the registration of non-traditional trademarks, and requires applicants to specify the type of trademark for which they seek registration. If a trademark application complies with such provisions, the trademark representation should be deemed compliant with Art. 4 b) EUTMR.
In this respect, sound trademarks, which consist exclusively of a sound or a combination of sounds, shall be represented by an audio file reproducing the sound or by an accurate representation of the sound in musical notation. This enables registration of recorded sounds which can hardly be represented graphically (e.g. a lion’s roar). Onomatopoeia, musical notes alone and sonograms will not be deemed accurate representations of a sign.
As for trademarks consisting exclusively of colours without contours, a distinction is made between single colours and colour combinations. The first shall be represented by a reproduction of the colour and an indication of that colour by reference to a generically recognised colour code. The second shall consist of the reproduction of the systematic arrangement of the colour combination in a uniform and predetermined manner and an indication of those colours by reference to a generically recognised colour code.
Motion trademarks consist of, or extend to, a movement or change in the position of the elements of the mark. These trademarks shall be represented by a video file or by a series of sequential still images showing the movement or change of position. A motion trademark may only be refused registration if a reasonably observant person with normal levels of perception and intelligence would not be able to understand precisely what the mark consists of, without expending a huge amount of intellectual energy and imagination (OHIM decision of 23/09/2010, R 443/2010-2).
Pattern trademarks are those consisting exclusively of a set of elements which are repeated regularly and, in order to obtain registration, they shall be represented by a reproduction showing the pattern of repetition.
Other provisions are set out for shape, position, multimedia and hologram trademarks. However, no specific indications are provided for the registration of olfactory, tactile, taste and other trademarks. In this respect, some guidance can be found in the EUIPO Guidelines for the Examination of EU Trademarks.
The subject matter of protection afforded to a trademark is exclusively determined by its representation. Accordingly, description of trademarks is no longer mandatory, but if provided in the cases allowed under Art. 3 EUTMIR it shall accord with the trademark representation and shall not extend its scope. Failing to meet this requirement would mean that the trademark is not clear and precise, which would lead to the refusal of its registration.
Trademarks will still have to meet the requirement of distinctiveness, which for non-traditional trademarks can represent a considerable obstacle for registration.
With regard to national trademarks, specular provisions are set out under EU Directive 2015/2436, which EU Member States are obliged to implement by 14 January 2019.