Elimination of the graphical representation requirement of your trademarks: Can’t find an available trademark? Be creative! Any sign can be registered… In theory

On October 1, 2017, one of the provisions of the European trademark system reform will become applicable, namely the elimination of the graphical representation requirement of a trademark.ue.

On October 1, 2017, one of the provisions of the European trademark system reform will become applicable, namely the elimination of the graphical representation requirement of a trademark.

Why This Change?

Up until now, the graphical reproduction requirement of a trademark has been an essential condition of the existence of the trademark in order to ensure its basic function, which is to differentiate the origin of products and services. What could be simpler than distinguishing them by visual marking?

However, faced with the multiplication of trademarks already registered, it has become increasingly difficult for any company to find available traditional signs (words, drawings or colors).

For 20 years, their marketing departments have been exploring new territories such as sounds, odors and holograms to identify their products or services. Art. 2 of Directive 89/104/EEC added the adverb “particularly” to the list of signs that can constitute a trademark, opening the door to an evolution.

Thus, a mark described as being the “scent of freshly-cut grass” for a tennis ball was able to be registered by the OHIM on February 11, 1999, which was immediately strongly contested and still remains a unique case at the EUIPO level.

Therefore, it became indispensable for the legislation to follow the market evolution whilst endorsing the jurisprudence of the European Court, setting up the necessary criteria for the adoption of color and olfactory trademarks, notably in decree TPICE T 305 /04 of October 27, 2005 Sieckmann.

Thus, the registration of the scent of a ripe strawberry represented by the image of a strawberry supplemented with a description was rejected, stating that “these marks are registrable as long as they are capable of a graphical representation that is ‘clear, precise, self-contained, easily accessible, intelligible, durable and objective'”.

The reform of the European system by the Trademark Package, and more precisely Directive 2015/2436 in Art. 3 and regulation (EU) 2015/2424 of the European Parliament and the Counsel in Art. 4 as adopted by the European Parliament on December 16, 2015 went one step further by removing the requirement for graphical representation of signs.

It entered into force on October 1, 2017 for European trademarks and via the transposition of the directive will pass for national applications, particularly in France.

This elimination will therefore facilitate the registration of new trademarks, but will also open up the field to new questions regarding their scope and the possibility of defending them.

Consequences for Filing Unconventional Signs

As of this date, signs can be represented in any appropriate form by means of commonly available technology, as long as the representation is “clear, precise, self-contained, easily accessible, intelligible, durable and objective”.

Article 3 of the European Union Trademark Implementing Regulation lays down specific rules and requirements for the representation of certain types of trademarks, including certain technical requirements, in accordance with the specific nature and characteristics of the trademark in question. A document established by EUIPO lists the types of documents required depending on the nature of the trademark.1

Can Trademarks Without Graphical Representation Be Registered?

Like any trademark, in order to be registered, it must, above all, be distinctive and not be exclusively made up by the shape or by “another characteristic” imposed by the nature of the product itself, or giving it a substantial value. This reference was added to Art. 7(1)(e) of the Implementing Regulation allowing, for example, the refusal an olfactory trademark for perfumes, for which it would constitute the essential feature.

Consequences on Trademark Search

The registries and search tools in databases must be adapted to allow for such signs to be searched. Consideration is underway with EUIPO, and while all searches relying on visual criteria (three-dimensional trademarks, position, movement, multimedia, relief, color itself) will be possible, this is not yet the case for auditory and olfactory trademarks.

Consequences on Assessing Infringement

Any trademark infringement action presumes at least two conditions:

  • A valid prior sign and
  • An attack on this sign by an identical copy or imitation.

In the case of litigation based on a trademark without a graphical representation, it is highly probable that the opposition will reply by contesting, on the one hand, the validity of the sign and, the difference and absence of risk of confusion on the other hand.

The court will then examine whether the sign has been depicted in a “clear, precise, self-contained, easily accessible, intelligible, durable and objective” manner. So, is a chemical formula intelligible from the point of view of the consumer? Is a scent sample sustainable?

The existence of a risk of confusion will then have to be decided on. The fundamental principles posed by the CJCE decree of November 11, 1997 Sabel/PUMA require an assessment done “globally, taking into account all factors relevant to the circumstances of the case.” This comprehensive assessment must be based on the “overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.”

The reproduction or imitation of olfactory trademarks is not any easier to demonstrate, even though the French courts have already dealt with these questions in the matter of copyrights or comparative tables for perfume infringement. The United States, which has allowed registration of these trademarks with a detailed description, considered doing surveys to determine the probability of the existence of a risk of confusion.

Understandably the first decisions are eagerly awaited and will be the subject of bitter debate as long as technology is not able to scientifically identify the closeness of such signs filed without graphic representation.

In Conclusion,

The possibility of registering a trademark without graphical representation signifies a legal progress and an important marketing asset for companies, the scope of such trademarks will be worked out as and when technological and jurisprudential developments evolve. Feel free to consult us on all your companies’ creations, whatever they may be!