Trade Marks: move with the times

On 1 October 2017, a number of changes to EU trade mark (EUTM) laws came into effect, including the removal of the graphical representation requirement. The aim of this change was to make entries in the EUTM register clearer, more accessible and easier to search for. The change has also opened the door to new types of marks, which can now be filed provided they use a generally available technology and the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

Brand owners can now better protect sound, motion and multimedia marks. Videos and sound files can now be submitted in commonly recognised formats and protected as EUTMs. (Indeed, if technology for reproducing scent becomes generally available in the future, it may be possible to protect those as EUTMs, although we are likely decades away from that.)

A reasonable amount of multimedia and motion EUTMs have already been submitted (33 applications and registrations at the time of writing). The new types of marks appear to be particularly attractive to TV producers (to protect an introduction or TV format), gaming companies (to protect the gameplay) and other creative industries that use digital branding, such as moving images, logos or distinctive promotional videos.

However, it's early days for these registrations, and they introduce some challenges for brands and those who advise them.

What are motion marks?

Motion marks are defined by the EUIPO guidelines as trade marks that consist of, or extend to, a movement or a change in the position of the elements of the mark. The phrase "extending to" contained in the definition means that the mark will include movement itself, but can also include words, logos or labels. There are, of course, technical requirements, and these will need to be considered before filing. A motion mark must be:

• represented either by submitting a video or a sequence of still sequential images showing movement/change of position;
• a video must be in MP4 format and cannot exceed 8,000KB per second and 20MB in size.

To date, only one motion mark has been filed as a group of sequential images, with all other brand owners opting for the video format. The benefit of sequential images is that they will actually appear on the registration certificate in that format, rather than being provided in a link to the video - something to bear in mind if the client is likely to enforce its EUTM and wants certainty.

Mutlimedia marks

Trade marks combining movement with sound do not qualify as motion marks, but will be multimedia marks. The inclusion of sound is the clear dividing line between the two. In addition to the image and sound, a multimedia mark can also contain words, logos, figurative elements or labels. The marks can only be represented by submitting an audiovisual file at the time of filing. That means these marks can only be filed online with the office (unlike motion marks, which can be filed as a sequence of images offiine). Audiovisual files must also be in MP4 format and cannot exceed 8,000KB per second and 20MB in size.

From an enforcement perspective, one concern is that filing multimedia marks with sound may arguably reduce the strength of those rights - it adds another layer when attempting to argue confusing similarity. It is unlikely that the sound in a multimedia mark will go unnoticed by the average consumer in the majority of cases, at least where the sound is not generic of the images displayed. It could be argued, then, that if there is a low level of similarity between the videos in a dispute, an overall difference in sound could take the mark far enough away. Accordingly, if the sound in a multimedia mark is independently distinctive, it is worth protecting the sound separately by filing for a motion mark with no sound. There are some analogies to be drawn here to the US supplemental register.

A non-distinctive sound could sit in a multimedia EUTM while it is acquiring distinctiveness through use, with the brand owner looking to protect the sound independently after many years of use and consumer recognition.

Example marks

Below is an overview of some of the relevant marks that have been filed so far. Of course, as these are moving images, we have had to make do with screenshots of the marks and a brief description.

image 1image 2image 3image 6image 7image 8image 9image 10

As these examples illustrate, the motion and multimedia marks being filed cover anything from moving logos, promotional videos, characters, moving hands and screen displays to computer /mobile gameplay. They are also being filed by IP firms, who presumably hope to be able to say that they were one of the first to take advantage of this new strand of protection.

However, while it is clear that many brand owners are attempting to protect their non-traditional brands, the rate (or speed) of acceptances is not particularly high at present. It also appears that certain brand owners have sought to protect arguably non-distinctive moving marks, attempting to take advantage of the recent removal of graphical requirements and the potential for uncertainty in terms of these marks at EUIPO.

We anticipate that a number of the pending applications illustrated will be refused registration on non-distinctive grounds, but if the owners have been using those videos and displays for a number of years, they could potentially argue acquired distinctiveness . Even if these marks are able to proceed to registration, they may be difficult rights to enforce against third parties and, at best, may be supplementary to traditional word and logo protection.

Of particular interest are applications for representations of moving hands, which would, if registered, provide a very broad scope of protection and hinder competition in the relevant industries. For example, if these marks are successfully registered and enforced, they could prevent competitors from building in the facility to use hand motions to open a speaker or change the volume.

Many of these marks contain non-distinctive sounds and elements that, if removed, may have provided a slightly broader scope of protection. The fact that brand owners are attempting to push the boundaries of protection is really exciting, but the good news is that EUIPO is clearly still examining these marks in full and taking its time in the process. We hope that the UK IPO is paying close attention to these concerns, and will address them when the EUTM directive making these changes is implemented here in the future.

Remaining concerns

What is clear already, however, is that non-traditional marks continue to be difficult to protect. The same criteria apply to their assessment as for traditional trade marks (words and logos), so the brand still must be distinctive and not generic or descriptive. The added hurdle for non-traditional marks is that the brand must be represented in a sufficiently clear and precise manner. And even if a mark is registered, some concerns remain. Having reviewed the registration certificates for the accepted motion and multimedia registrations, these simply include a link to EUIPO's website. It is not clear what the registered EUTM is. This means that EUIPO cannot change its domain name in the future without affecting those non-traditional marks. It will also inevitably lead to confusion when enforcing those registered marks. Many courts in Europe are traditional (relying only on paper) and may not even follow, or attempt to access, the link. That could lead to brand owners intent on registering motion or multimedia marks forum shopping for those EU courts that use digital systems.

Also of concern is the question: what if infringers do not have access to the internet? In the UK, the civil procedure rules require pre-action steps prior to enforcement action. One of those requirements is to be clear about what right is being asserted. Based on these certificates, little more than sending the web link may be required. It follows then that screenshots or storyboards should also be relied on.

What raises the most serious concern, though, is that these new motion or multimedia marks could contain names or logos that are identical or confusingly similar to a brand owner's earlier rights. Although the non-traditional marks are being examined in the same way as traditional ones, it remains a fact that EUIPO does not raise objections based on identity or similarity with earlier rights. The brand owner itself needs to file an opposition. Having reviewed the EUTM register, we are not convinced that notices are being sent to earlier right holders where similar marks are contained in the videos for which applications have been filed.

Because these are new types of marks with untested boundaries of protection, we also suggest that trade mark representatives keep an eye on them so that anything containing identical or similar brands can be caught and challenged where necessary. Clearly, it will be hard for a watch provider to capture each individual frame of a protected video if it relies only on the software used for traditional marks. Our recommendation to brand owners is to think carefully about which watch provider they are using, and ensure the one they choose has suitable technology available to meet the new requirements of watching motion and multimedia marks.

Creative challenge

Undoubtedly, the continuing trend will be for brand owners to get increasingly creative in terms of how they define their business. Taking advantage of technology to enhance their identity is what makes creative brands stand out and gets people talking. Yet considering the large number of our clients already using digital branding, moving images and promotional videos, we observe that many of the largest global brand owners have yet to take advantage of protection for these potential marks. This may be an indication that they are waiting for the dust to settle and the boundaries of protection to be clarified, or it could be that they see traditional protection as sufficient for the time being. It is also true that, where the applicant is considering protection beyond the EU, it must be aware that video and audiovisual files are not being accepted by WIPO, and this is not expected to change any time soon.

As a result, the brand owner must be committed to achieving only EUTM protection for now.

Nonetheless, for brands or clients implementing a creative branding strategy that takes advantage of new technology, this could be the time to review the protection strategy and consider EUTM protection. For certain right holders, such as those that own TV formats or computer games, the ability to protect these marks is a real asset. Often those owners would refer to unregistered rights as their strongest IP rights. With the help of these new EUTM rights, they are now more likely to also have registered rights to assert, sell, assign or license.

This article was first published in the July/August 2018 issue of the CITMA Review, the journal of the Chartered Institute of Trade Mark Attorneys (CITMA).