EU Intellectual Property Office (EUIPO) Board of Appeal clarifies criteria for assessing the distinctive character of multimedia marks. 

What has happened? 

• Multimedia marks are marks consisting of the combination of image and sound. They can also include words, logos, and figurative elements. 

• The registration of these marks in the EU (and nationally in the UK and other EU member states) was made possible a few years ago when the "graphic representation" requirement for trade mark registration was eliminated. This paved the way for new types of trade marks (filed in formats not previously accepted) to be registered.

• In this case, the applicant filed an application to register a 22-second animated video (called "Super Simon") as an EU trade mark. The application was filed as a test case. 

• The EUIPO initially rejected the application on the grounds that the mark lacks distinctive character. However, that decision was recently over-turned by the EUIPO Board of Appeal. It held that there are no stricter requirements for the registrability of multimedia marks compared to other marks. 

• Importantly, according to the Board of Appeal, it is not necessary for consumers to remember all the details shown in the mark.

• The decision is one of the first in relation to multimedia marks and provides helpful guidance on their registrability. Multimedia marks will become increasingly important as scope for their use (eg in environments such as the metaverse and spatial computing) increases. 

Want to know more?

A Dutch trade mark agency filed a 22-second animation video as a multimedia mark at the EUIPO covering the following goods/services (as amended):

• Class 16: Books, including biographies

• Class 33: Wine, including Luxembourgish wines, Elzasser Pinot Noir and red wines

• Class 41: Relaxation; cultural activities; traditional music performances.

The application was filed as a test case. The video depicts a fictional superhero character, Super Simon (ie the retired Director General of the Benelux IP Office), saying goodbye to his colleagues and then taking off to a holiday destination. 

What did the EUIPO examiner say?

The examiner held that the mark lacked distinctiveness given:

• The overall complexity of the video.

• That there was no clear reference to the commercial origin of the goods/services concerned.

• That the video did not have enough contact with the goods and services in question.

• That the key elements of the video were not summarised at the end (as advertising spots usually do).

For these reasons, consumers would not be able to identify the animation video as a source of origin. The fact that the main character in the video is clearly recognisable was not sufficient.

The examiner also noted that the applicant's intention for filing the application was not to identify the commercial origin of a particular undertaking, but rather to convey a captivating message. 

What did the Board of Appeal say?

The Board of Appeal dismissed these arguments holding that:

• There is no higher threshold for establishing distinctive character for multimedia marks (as previously held for other non-traditional marks such as slogans).

• It is sufficient that consumers remember the main distinctive element of a multimedia mark. There is no need for the relevant public to remember all the other details if the main distinctive element is enough to distinguish the mark from animation videos of other undertakings.

• The length of the mark or the complexity of the individual elements are irrelevant as long as consumers are able to identify the multimedia mark as an indication of origin.

• Here, the key storyline (Super Simon flies to a holiday destination) is distinctive, and all the other details are irrelevant. 

• The fact that the multimedia mark is a video does not mean that this new type of mark must be compared to an advertising spot. Trade marks and ads have a different purpose. Ads are informative and promote goods/services bearing a trade mark. A trade mark does not provide information on the goods/services because it needs to be distinctive to differentiate the goods/services from different undertakings.

• It is not a requirement for multimedia marks to provide precise information on the identity of the manufacturer of the goods or the supplier of the services. This requirement is not in line with the case law. 

• The underlying reasons for filing the application are not relevant as long as it was not filed in bad faith (which was not considered in this case). The EU trade mark system does not require applicants to confirm an intention to use the mark when filing the application. The fact that the mark was applied for as a test case was therefore irrelevant. 

The Board of Appeal therefore annulled the examiner's decision and the animation video was accepted for registration as a multimedia mark.