CITMA 2019: ‘Greater consensus’ needed across EU on new marks
Greater communication and consensus is needed to properly implement the European Union’s 2015 trademark directive, Kate O’Rourke, former president of the Chartered Institute of Trade Mark Attorneys has said.
Speaking at the CITMA spring conference in London today, March 14, O’Rourke said the new directive raises a number of problems for brands wishing to register trademarks, and for the attorneys representing them.
As of January this year, trademark applicants in the UK are no longer required to submit a graphical representation of a trademark.
Instead, marks may be represented in any relevant form using “generally available technology”, a move which O’Rourke said potentially does away with the need for any accompanying description of the mark, if the representation is distinctive enough.
New forms of marks available include sound marks, holograms and multimedia. These marks still need to meet the previous criteria and be clear, precise, self-contained, durable and objective.
While the deadline for IP offices across the EU to implement the directive was January of this year, as of February, only 16 offices had done so.
According to O’Rourke, in September 2016, the European Union Intellectual Property Office found that a number of offices could not accept new marks, such as motion marks or multimedia marks, because they did not have the facilities.
She said the figures were a reflection of this. Since the directive came into action, 99.54% of trademark filings across the EU are still for figurative or word marks.
For brands and attorneys advising clients, O’Rourke said this lack of consensus among the offices posed a problem.
“If you were trying to advise your clients on what they could do throughout the EU on a national level, it could be difficult” O’Rourke said.
For example, The UK Intellectual Property Office has indicated that the trademark type is only an aid to administration, and should not seek to define the mark.
But O’Rourke said this was not consistent across the EU. Some offices surveyed by the EUIPO determined in their rulings that the type of mark also defined its subject matter
Additionally, she also highlighted some of the difficulties IP offices have when reviewing registrations for the new marks.
An example of this is when a company tries to register a sound mark for a word, but a figurative mark for that word already exists. IP offices will have to determine what is most important: the aural perspective, the visual perspective or conceptual perspective of a mark, O’Rourke said.
“We need some sort of common communication and attitude towards these new types of marks,” she said.
Andy King, a partner at Mewburn Ellis in London, said difficulties will also arise when trying to determine whether one sound is similar to another sound.
“Are we then straying into the world of copyright when dealing with sound marks?” King asked—a question which has not yet been determined by the IP offices or the courts.
Both King and O’Rourke agreed that over time, as IP offices pass more judgements and attorneys receive more case law, it should become clearer.
But this will take time, King said. “I can see some referrals to the [Court of Justice of the European Union] in the meantime.”
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