20 September 2019TrademarksRory O'Neill

Marques 2019: clarity needed on non-traditional marks

There has been a slow uptake in filings for the new, so-called ‘non-traditional’ EU trademarks since their introduction under the EU 2017/1001 trademark regulations, while a number of problems remain to be solved regarding criteria for registration.

This  emerged from a session examining the impact to date of the reforms on the EU Intellectual Property Office (EUIPO) this morning, September 20 on the final day of the Marques 2019 annual conference in Dublin, Ireland.

According to Dimitris Botis, deputy director of the international cooperation and legal affairs department at the EUIPO, there were 1,391 non-traditional trademark filings from October 1, 2017 to the beginning of this month.

This includes just three hologram marks, one of the new categories of marks introduced in the reforms.

As practitioners and brands are still getting to grips with the new types of marks, Botis outlined some examples of the grounds on which non-traditional marks have been rejected to date.

He cited one sound mark which clocked in at 39 seconds, and was rejected as “too long and complex”.

Another, he said, covering electronically-operated scooters, was “perceived as a mere burst of engine noise”, and lacked distinctiveness.

As part of the session, the panel conducted a poll of the audience, which demonstrated the extent to which there is still no consensus on what kinds of sound marks should be considered distinctive.

A ‘banana chorus’ sound, for example, featuring the word ‘banana’ sung to a melody, divided the audience straight down the middle, with just over half (51%) considering it to be distinctive with respect to the fruit.

The words “premium quality” sung to a beat was regarded by only 40% of the audience as being distinctive, yet just under half (48%) said the same beat with no words should be protectable as a sound mark.

Jana Bogatz, partner at D Young in Munich, and member of the CP11 Convergence Project aimed at providing guidelines for registering the new marks, said that in her opinion, there “should not be a different outcome” when it came to the two “premium quality” beats.

The panel agreed that the results highlighted the difficulties and confusion that remains regarding the new types of marks.

Bogatz spoke about her work as part of the CP11 project, which she says will provide trademark examiners with guidance and assistance when it comes to new types of applications.

Some of the issues they are trying to resolve centre around providing clarity as to what can and cannot be registered. For example, in the case of sound marks, “does it matter if [a melody] is played by a violin or a piano?”

This is “not an easy subject”, Bogatz said, particularly with such a small sample of decisions to date.

Brexit perspective

Roland Mallinson, partner at Taylor Wessing in London and chair of the Marques Brexit team, updated attendees on the latest with respect to Brexit and how it could impact the EUIPO.

Following on from the discussion on non-traditional marks, Mallinson said that he hoped there would be no divergence between the EU and the UK on the outcome of the CP11 project.

He said it was “unlikely” that Brexit would have an impact in that respect.

He noted, however, that in the event of a no-deal Brexit which would see UK courts no longer bound by Court of Justice of the European Union precedent, that there could be divergence on marks such as shapes and colours.

The Marques team had been in regular contact with the UK authorities, he said, although he said it was “disappointing” that the European Commission had not shown any interest in a meeting in three years.

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