New types of marks available after the European Union Trade Mark Reform An Analysis in the light of the U.S. Trade mark law

Author:Inês Ribeiro da Cunha, Jurgita Randakeviciute-Alpman
Position:LL.M. is an IP Legal Specialist at the International Cooperation and Legal Affairs Department, European Union Intellectual Property Office (EUIPO)/LL.M. is a Senior Research Fellow at the Max Planck Institute for Innovation and Competition
Pages:375-397
SUMMARY

This article analyzes one of the novelties brought about by the European Union trade mark reform; i.e. the removal of the graphic representation requirement opening opportunities to register new types of marks at the European Union Intellectual Property Office. In this article, the legal requirements for the registration of the non-traditional trade marks under the legal frameworks of the... (see full summary)

 
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New types of marks available after the European Union Trade Mark Reform
2020
375
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New types of marks available after the
European Union Trade Mark Reform
AN ANALYSIS IN THE LIGHT OF THE U.S. TRADE MARK LAW
by Inês Ribeiro da Cunha and Jurgita Randakevičiūtė-Alpman*
© 2019 Inês Ribeiro da Cunha and Jurgita Randakevič iūtė-Alpman
Everybody may disseminate this ar ticle by electronic m eans and make it available for downloa d under the terms and
conditions of the Digital P eer Publishing Licence (DPPL). A copy of the license text may be obta ined at http://nbn-resolving.
de/urn:nbn:de:0009-dppl-v3-en8.
Recommended citation: Inês Rib eiro da Cunha and Jurgita Randakevičiūtė-Alpman, New type s of marks available after the
European Union Trade Mark Reform, 10 (2019) JIPITEC 375 par a 1.
Keywords: non traditional trademarks; EU trademark regulation ; trademark representation; US trademark.
trade marks under the legal frameworks of the Eu-
ropean Union and the United States of America are
discussed and the new provisions of the European
Union trade mark law on the representation of trade
marks are assessed.
Abstract: This article analyzes one of the novelties
brought about by the European Union trade mark re-
form; i.e. the removal of the graphic representation
requirement opening opportunities to register new
types of marks at the European Union Intellectual
Property Office. In this article, the legal requirements
for the registration of the non-traditional
A. Introduction
1 The amending Regulation (EU) No 2015/2424 of the
European Parliament and the Council, which came
into force on 23 March 20161 and is now codied as
* Inês Ribeiro da Cunha, LL.M. is an IP Legal Specialist at the
International Cooperation and Legal Affairs Department,
European Union Intellectual Property Ofce (EUIPO). Dr.
Jurgita Randakevičiūtė-Alpman, LL.M. is a Senior Research
Fellow at the Max Planck Institute for Innovation and
Competition.
1 Regulation (EU) 2015/2424 of the European Parliament
and of the Council of 16 December 2015 amending Council
Regulation (EC) No 207/2009 on the Community trade mark
and Commission Regulation (EC) No 2868/95 implementing
Council Regulation (EC) No 40/94 on the Community trade
2017/10012 (the ‘EUTMR’), brought about a number
of amendments to the European Union (the ‘EU’)
trade mark law. One of the changes, which came into
force on 1 October 2017, is the elimination of the
graphic representation requirement establishing
that a trade mark can be represented on the Register
of European Union trade marks (the ‘Register’) in
any possible manner as long as the authorities, e.g.,
the European Union Intellectual Property Ofce (the
mark, and repealing Commission Regulation (EC) No
2869/95 on the fees payable to the Ofce for Harmonization
in the Internal Market (Trade Marks and Designs) [2015] OJ L
341/21 (since 30 September 2017 no longer in force).
2 Regulation (EU) 2017/1001 of the European Parliament and
of the Council of 14 June 2017 on the European Union trade
mark [2017] OJ L154/1.
2020
Inês Ribeiro da Cunha and Jurgita Randakevičiūtė-Alpman
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‘EUIPO’)
3
, and the public are able to identify what
exactly is protected4. Due to this modication, a
wider variety of signs is now available for registration
as EU trade marks.
2 The graphic representation requirement used to be
regarded as a “serious restriction”5 to register the
less common, so-called “non-traditional” or “non-
conventional”6 types of trade marks, especially,
the non-visual ones. This prerequisite, together
with the case law of the Court of Justice of the
European Union (the ‘CJEU’), established that
although a mark itself does not have to be capable
of being perceived visually, it should be able to be
represented graphically in images, lines, and/or
characters
7
. Therefore, taking into consideration the
growing use of new branding strategies that utilize
non-traditional marks8, in particular, those directed
3 Former Ofce for Harmonisation in the Internal Market
(OHIM). In this article, the abbreviation ‘EUIPO’ will be used.
4 EUTMR, art 4.
5 Tobias Cohen Jeroham, Constant van Nispen and Tony
Huydecoper, European Trademark Law (Kluwer Law
International 2010) 74-75.
6 The terms “non-traditional” and/or ”non-conventional”
cover marks, other than word or gurative, that are not
visually perceptible, but “have a potential for distinguishing
goods and services”, or visible signs, that “differ from
the traditional notion of signs constituting trade marks
by one or more of their features” (World Intellectual
Property Organization, Standing Committee on the Law of
Trademarks, Industrial Designs and Geographic Indications,
Sixteenth Session, ‘New Types of Marks’, November 13-17,
2006, Geneva <https://www.wipo.int/edocs/mdocs/sct/
en/sct_16/sct_16_2.pdf > accessed 23 May 2019) or it can be
regarded as ‘any designation that serves to indicate source,
origin, sponsorship or afliation that is not a word mark,
graphic symbol, or combination of colours’ (Llewellyn J
Gibbons, ‘Non-conventional Trademarks Under United
States Law: An Unbounded New Frontier of Branding’ in
Mark Perry (ed), Global Governance of Intellectual Property in
the 21st Century (Springer International Publishing 2016)).
The term “non-traditional” is used throughout this article.
7 Case C-273/00 Sieckmann [2002] ECR I-11770, para 55.
8 E.g.: “The Singapore Girl” by Singapore Airlines or
crunchiness of “Rice Crispies” by Kellogg’s (Martin
Lindstrom, ‘Broad sensory branding’ [2005] 14 (2) Journal of
Product & Brand Management 84, 85-86). Also see: Klaus-
Peter Wiedmann and others, ‘Creating Multi-Sensory
Experiences in Luxury Marketing’ [2013] 6 Marketing
Review St. Gallen 61; John Groves, ‘A short History of
Sound Branding’ in Kai Bronner and Rainer Hirt (eds),
Audio Branding. Brands Sound and Communication (Nomos
2009) 61, 61; Jai Beom Kim, Yoori Koo and Don Ryun Chang,
to various non-visual senses (sound, scent, taste or
touch) of human beings, this amendment of EU law
is generally accepted
9
, even though it provides room
for questions.
3
The main objective of this article is to discuss the post-
reform EU trade mark legal framework regarding the
protection of non-traditional trade marks taking into
consideration the new criteria for their registration
set by the EUTMR and the Implementing Regulation
(EU) 2018/626
10
(the ‘EUTMIR’). In this context, it
is particularly important to analyze what specic
aspects should be taken into consideration when
applying for the registration of non-traditional trade
marks, in order to full the requirement indicating
that a trade mark should be represented on the
Register “in a manner which enables the competent
authorities and the public to determine the clear and
precise subject matter of the protection afforded to
its proprietor”11. In this regard, it seems relevant to
look into the trade mark registration requirements
in certain jurisdictions, such as the United States of
America (the ‘U.S.’), where there is no compulsory
graphic representation requirement.
4 This objective will be achieved by: (i) discussing the
pre-reform EU law with regard to the registration
of non-traditional trade marks; (ii) analyzing the
requirements for the registration of non-traditional
trade marks in the U.S.; (iii) presenting the new
provisions of the EUTMR and EUTMIR relevant for
the registration of non-traditional EU trade marks;
(iv) assessing the post-reform approach of EU trade
mark law with respect to the registration of non-
traditional trade marks. All this will be achieved by
analyzing both the pre-reform and new EU law, as
well as the U.S. law with regard to the registration
of non-traditional marks and exploring the relevant
‘Integrated Brand Experience Through Sensory Branding
and IMC’ [2009] 20 (3) dmi 7; Melissa E Roth, ‘Something Old,
Something New, Something Borrowed, Something Blue: A
New Tradition in Nontraditional Trademark Registrations’
[2005] 1 Cardozo Law Review 457, 458-459.
9 E.g.: “<…> there seems to be general agreement that
trademark law should be open for such developments,
whatever the mode of representation [of a trade mark]
may be” (Annette Kur, ‘The EU Trademark Reform Package
– (Too) Bold a Step Ahead or Back to Status Quo?’ [2015]
vol. 19 Marquette Intellectual Property Review 19, 26).
10 Commission Implementing Regulation (EU) 2018/626 of 5
March 2018 laying down detailed rules for implementing
certain provisions of Council Regulation (EC) No 2017/1001
of the European Parliament and of the Council on the
European Union trade mark, and repealing Implementing
Regulation (EU) 2017/1431 [2018] OJ L 104/37.
11 EUTMR, art 3 (1).

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