Significant changes to the EU trade mark regime have opened up a number of opportunities for brand owners to obtain protection for a range of new types of marks. Previously, a trade mark had to be capable of being represented graphically to be registered. This meant it was difficult to register marks such as sound or motion marks, with very few making it through to registration.
Marks will no longer require graphic representation
It is now possible to apply for an EU trade mark even if it cannot be represented graphically (this development will also apply to UK marks, most likely from January 2019). Trade marks which can only be represented electronically (e.g. multimedia marks) may be accepted, and non-visual marks (e.g. sound marks) will be easier to file.
However, all marks will still be subject to the usual examination of whether they are distinctive in relation to the relevant goods and services. Whilst marks can be represented in any appropriate form using generally available technology, they must also be reproduced on the register in a manner which enables the public to identify what is protected with clarity and precision.
The following types of mark are therefore now available to register as EUTMs:
- Word marks;
- Figurative marks such as logos;
- Shape marks: 3D marks including containers and packaging;
- Position marks: marks consisting of the specific way in which a mark is placed on a product;
- Pattern marks;
- Colour marks (single colours or in combination);
- Sound marks: it will now be possible to submit an audio file (or, as previously, musical notation);
- Motion marks: marks consisting of a movement or a change in the position of the elements of the mark (an example would be Sony's registration for a red ribbon of liquid turning into the Sony Ericsson logo);
- Multimedia marks: marks consisting of the combination of image and sound;
- Hologram marks: marks consisting of elements with holographic characteristics.
The list of protectable marks is not exhaustive and others marks may be added, given advances in technology and branding practices. An example would be Apple's application to register its store layout. Smells or taste marks would also be categorised as 'other' marks that are potentially registrable: for now they are likely to remain unregistrable due to the clarity and precision requirements. However, this may change in the future if there is suitable technology to represent such marks.
New EU certification mark
An EU certification mark is also now available (some Member States already provided for national certification marks). A certification mark is one filed with a set of quality standards which govern use of the mark. It indicates that goods and services provided under the mark comply with those standards e.g. the Fairtrade mark or the British Kite mark.
Any public or private entity can apply for a certification mark but they must not have a business supplying the kinds of goods and services certified by the mark. Certification marks cannot be filed in relation to certification concerning a geographic location.
Being able to use a certification mark on packaging is attractive, for example, in the food and drink industry. However, the new right brings with it the risk of enforcement action where a business is using the certification mark (perhaps accidentally) without being certified. This is a particular risk where certification marks are perhaps perceived as generic or due to a lack of awareness. As ever, proper clearance checks when adopting new packaging or a new marketing campaign are crucial.