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 |
New types of marks available after the European Union Trade Mark Reform
2020
375
3
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 codied as
* Inês Ribeiro da Cunha, LL.M. is an IP Legal Specialist at the
International Cooperation and Legal Affairs Department,
European Union Intellectual Property Ofce (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 Ofce (the
mark, and repealing Commission Regulation (EC) No
2869/95 on the fees payable to the Ofce 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
376
32020
376
3
‘EUIPO’)
3
, and the public are able to identify what
exactly is protected4. Due to this modication, 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 Ofce 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
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 afliation 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 specic
aspects should be taken into consideration when
applying for the registration of non-traditional trade
marks, in order to full 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).
New types of marks available after the European Union Trade Mark Reform
2020
377
3
EU and U.S. case law, the legal doctrine and the
travaux préparatoires regarding EU trade mark reform
concerning the registration of non-traditional trade
marks.
B. The Pre-reform EU Law regarding
Non-Traditional Trade Marks
5 The question with regard to the registration of non-
traditional marks has already been discussed by the
World Intellectual Property Organization’s Standing
Committee in 200612 as well as analyzed by the
scholars and practitioners of various jurisdictions13.
The Singapore Treaty on the Law of Trademarks
as of 2006 was the rst legal act, which explicitly
observed the possibility to register non-traditional
trade marks under the laws of the signatory states,
at the same time not obliging them to recognize this
type of marks14. Thus, the national and supranational
jurisdictions, including the EU, were provided with
the freedom to decide what types of trade marks
should be protected.
12 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
wipo.int/edocs/mdocs/sct/en/sct_16/sct_16_2.pdf >
accessed 23 May 2019.
13 E.g.: John A Tessensohn, ‘Non-traditional trade marks
thriving in Japan’ [2016] 11 (6) Journal of Intellectual
Property Law & Practice 413; Roberto Carapeto, ‘A
Reection About the Introduction of Non-Traditional
Trade marks’ [2016] 34 Waseda Bulletin of Comparative Law
25; Kexin Li, ‘Where Is The Right Balance? Exploring The
Current Regulations On Nontraditional Three Dimensional
Trademark Registration In The United States, The European
Union, Japan and China’ [2012] 30 Wisconsin International
Law Journal 428; Qian Zhan, ‘The international registration
of non-traditional trademarks: compliance with the TRIPS
Agreement and the Paris Convention’ [2017] 16 (1) World
Trade Review 111.
14 Singapore Treaty on the Law of Trademarks, 27 March
2006, art 2(1) wipolex.wipo.int/en/text/290013>
accessed 23 May 2019; Resolution by the Diplomatic
Conference Supplementary to the Singapore Treaty on the
Law of Trademarks, para 3, 27 March 2006
wipo.int/en/text/290013> accessed 23 May 2019. Also see:
Sheldon W Halpern, Craig Allen Nard and Kenneth L Port,
Fundamentals of US Intellectual Property Law. Copyright, Patent
and Trade mark (5th Edition, Wolters Kluwer 2015) 273.
6
Before the EU trade mark reform in 2015, the Council
Regulation (EC) No 207/2009 (the ‘CTMR’) provided
that “[a] Community trade mark may consist of any
signs capable of being represented graphically”15. In
theory, the latter provision of the CTMR allowed any
signs, including those that are not in itself capable
of being perceived visually, to be registered under
EU trade mark law, as long as they were capable
of graphic representation and distinguished the
goods or services of one undertaking from the
goods or services of another. In addition, according
to the CJEU case law, such a graphic representation
(particularly by means of images, lines or characters)
had to be in a form that is clear, precise, self-
contained, easily accessible, intelligible, durable,
and objective16. Thus, although the requirement of
the graphic representation did not mean that signs,
which are not perceptible visually, were excluded
from protection
17
, in practice, predominantly the
visual signs were those capable of fullling the latter
prerequisites18 and, therefore, were the most likely
to be registered19.
7
This situation did not completely discourage
applicants from trying to obtain registrations for
non-traditional trade marks, however; only certain
marks, such as, colors20,
15 Council Regulation (EC) No 207/2009 of 26 February 2009
on the European Union trade mark [2009] OJ L078/1, art 4.
Since 30 September 2017, repealed by EUTMR.
16 Case C-273/00 Sieckmann [2002] ECR I-11770, para 55.
17 ibid, para 45.
18 Tobias Cohen Jeroham, Constant van Nispen and Tony
Huydecoper, European Trademark Law (Kluwer Law
International 2010) 75.
19 With regard to non-visual signs, see e.g.: Case C-283/01
Shield Mark [2003] ECR I-14313, para 60; Case T-305/04
Eden v OHIM [2005] ECR II-04705, para 33, 40-43; Decision R
120/2001-2 of 04/08/2003 of the Second Board of Appeal,
para 12.
20 E.g.: a mark described in the EUIPO’s database as consisting
“of the colour green Pantone 348C as applied to the exterior
surface of the premises used for the sale of the goods and
services”, ling No. 000001991
eu/eSearch/#details/trademarks/000001991> accessed
23 May 2019; a mark described in the EUIPO’s database as
consisting of “Lilac/violet, single colour as shown in the
representation. The values (specic coordinates in the
colour space) for the present mark are: “L* = 53.58 ±0.8;
a*= 15.78±0.5; b*= -31.04±0.5”. The mark can be located in
“Pantone’s Process Book” between the shades with number
“E 176-4” and “E 176-3””, ling No. 000031336
euipo.europa.eu/eSearch/#details/trademarks/000031336>
accessed 23 May 2019; a mark in the EUIPO’s database as
2020
Inês Ribeiro da Cunha and Jurgita Randakevičiūtė-Alpman
378
3
8
shapes
21
and musical tunes
22
, since they were able
to be represented graphically, were registered at
the EUIPO. According to the pre-reform EU trade
mark law and its interpretation, it was not possible
to register mere sounds23 (onomatopoeias, e.g., a roar
of a lion or a sound of a motorbike), scents (smells)24
and tastes (avors)25, because they were not regarded
consisting of “Magenta (RAL 4010 telemagenta)”, ling
No. 000212787
trademarks/000212787> accessed 23 May 2019, etc.
21 E.g.: a mark described in the EUIPO’s database as consisting
“of a container, whose shape forms a parallelepiped, on
the front or frontal parallelogram of which is the word
ARROZ (which is not claimed) and under it the name DELTA
in vertical capital letters in fancy type in which the ends
and corners present curved appendices, some of which are
circular (E, L and T) and some of which are opposite and
symmetrical to each other (E, L, T and A). This side bearing
the name has on its upper part a thick angular line with the
vertex or acute angle touching the centre of the upper edge
of the rectangle, and beneath the name another angular
line which is a mirror image of the upper one, and therefore
with the acute angle inverted. On the lateral parallelograms
the abovementioned lines are continued horizontally and
parallel to one another.”, ling No. 000025957
euipo.europa.eu/eSearch/#details/trademarks/000025957>
accessed 23 May 2019; a mark described in the EUIPO’s
database as consisting of a “[c]one, very elongated, slightly
curved, of glass, its top part of polished metal, surmounted
by a ball.”, lling No. 001647874 ttps://euipo.europa.eu/
eSearch/#details/trademarks/000025957> accessed 23 May
2019, etc.
22 E.g.: a mark described in the EUIPO’s database as
consisting “of a sound mark called PRELUDE”, ling
No. 000907527
trademarks/000907527> accessed 23 May 2019; a
mark described in the EUIPO’s database as consisting
of the “Signature tune of Nokia Corporation”, ling
No. 001040955
trademarks/001040955> accessed 23 May 2019; a mark
described in the EUIPO’s database as consisting “of a musical
theme, shown on a score sheet, which can be played on its
own or with orchestration”, ling No. 001312008
euipo.europa.eu/eSearch/#details/trademarks/001312008>
accessed 23 May 2019, etc.
23 Case C-283/01 Shield Mark [2003] ECR I-14313, para 60.
24 Case C-273/00 Sieckmann [2002] ECR I-11770, para 73; Case
T-305/04 Eden v OHIM [2005] ECR II-04705, para 33, 40-43.
25 Decision R 120/2001-2 of 04/08/2003 of the Second Board
of Appeal, para 12 (in this case the examiner waived the
objection based on the art. 7(1)(a) in conjunction with
the art. 4 of the Council Regulation (EC) No 40/94 of 20
December 1993 on the Community trademark [1994] OJ L
11/1 before the judgment in the case C-273/00 Sieckmann
as capable of being represented graphically in a form
that suited the requirements established by the CJEU
case law26.
9
Taking into consideration the situation discussed
above, it is important to analyze, what the
abolishment of the graphic representation
requirement together with the existing case law
of the General Court of the European Union (the
‘GCEU’) and the CJEU means for the practical
implementation of the new provisions of the
EUTMR and EUTMIR. In this context, the position
and the experience of the U.S., where the drawing
requirement for the registration of different types
of signs is more exible, may be a useful example
for the assessment of the elimination of the graphic
representation requirement in EU trade mark law.
C. The Non-Traditional Trade
Marks under U.S. Law
10
U.S. law does not establish the graphic representation
as a requirement for the federal registration27 of
all types of trade marks as it used to be under EU
law before the recent reform. The Trademark Trial
and Appeal Board (the ‘TTAB’) of the United States
Patent and Trademark Ofce (the ‘USPTO’) already
indicated in 1978 that when considering the available
types of trade marks, exibility, which is essential
in order to keep up with the ever-changing reality
brought about by the development of technology,
requires the mark to not be conned to a graphic
form28. The acceptance of non-traditional marks
for registration particularly moved forward in
1995 after the Supreme Court of the United States
(the ‘Supreme Court’) ruled that “the source-
distinguishing ability of a mark – not its ontological
was taken, however, if that objection would not be waived,
the Board of Appeal would apply the Sieckmann case).
26 Case C-273/00 Sieckmann [2002] ECR I-11770, para 55.
27 Under U.S. law, registration is not required for trade mark
protection. According to the Trademark Act of 1946, 15
U.S.C. § 1125 (2019), it is possible to sue for the infringement
of an unregistered mark. However, trade mark registration
under U.S. law provides for certain benets. For more
information on the federal trade mark registration in the
U.S., see e.g.: Lydia Pallas Loren and Joseph Scott Miller,
Intellectual Property Law: Cases and Materials (Semaphore
Press 2018) 519-525.
28 In re General Electric Broadcasting Company Inc. 199
U.S.P.Q. (BNA) 560 (TTBA 1978).
New types of marks available after the European Union Trade Mark Reform
2020
379
3
status”29 permits a sign to serve as a trade mark30.
In addition, the Supreme Court indicated that
the language of the Trademark Act of 1946 (the
‘Trademark Act’)31 denes the “universe [of things
that can qualify as a trade mark] in the broadest
of terms”32.Thus, single colors may sometimes meet
the basic requirements for a trade mark and there
is no rule preventing that
33
. The words “symbol”,
“device” and “any combination thereof” dening a
trade mark in the Trademark Act34 are the key terms
for allowing for the protection of color, sound, shape
and other types of signs where they serve as trade
marks35. The registration procedure for non-visual
marks was accommodated by the USPTO establishing
the classication “a mark drawing code 6”, which is
used for sounds, scents and other non-visual marks
36
.
29 Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 164
(1995).
30 ibid.
31 Trademark Act of 1946, 15 U.S.C. § 1051 (2019): “The term
“trademark” includes any word, name, symbol, or device, or
any combination thereof— (1) used by a person, or (2) which
a person has a bona de intention to use in commerce and
applies to register on the principal register established by
this chapter, to identify and distinguish his or her goods,
including a unique product, from those manufactured or
sold by others and to indicate the source of the goods, even
if that source is unknown.”
32 Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162
(1995).
33 ibid, 161 and 166 (1995).
34 Trademark Act of 1946, 15 U.S.C. § 1051 (2019).
35 Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 172-173
(1995). However, in the legal doctrine, not everyone agrees
with this interpretation (see e.g.: Glynn S Lunney, Jr., ‘Non-
Traditional Trademarks. The Error Costs of Making an
Exception the Rule’ in Irene Calboli and Martin Senftleben
(eds), The Protection of Non-Traditional Trademarks. Critical
Perspectives (OUP 2018), 225).
36 Trademark Manual of Examining Procedure, Chapter 800,
§ 807.09 ‘Drawing’ of Sound, Scent, or Non-Visual Mark
(October 2018) 
current#/current/TMEP-800d1e1103.html> accessed 12
April 2019; e.g.: (i) U.S. Reg. No. 5905067, registration date
5 November 2019 (sound mark consisting “of Instrumental
work performed by two pianos in the key of B-major that
is comprised of a ve-note melody of D#5, E5, F#5, B4,
and ending on the B4 and B5 octaves and accompanied
by two B (tonic) chords” for “[i]nsurance underwriting
and administration services for all types of insurance;
providing underwriting and administration services for
pension funds; residential and commercial mortgage
11
The existence of the above-specied drawing
code demonstrates that, under U.S. law, formal
requirements allow for the protection of non-
traditional signs, including the non-visual ones.
In addition, few other formal requirements have
to be fullled in order to obtain a registration.
Firstly, a drawing, which shows the mark and
serves for providing a “notice of the nature of
the mark sought to be registered”37, needs to be
presented. This condition applies to visual, e.g.,
word, numerical, three-dimensional, motion and
hologram signs, whereas for the registration of
sound, scent and other non-visual marks it is not
compulsory38. Secondly, applications for any mark in
non-standard characters39 must be accompanied by
lending services; real estate brokerage and management
services; mutual fund brokerage and investment services,
namely, investment banking and funds investment;
nancial retirement planning services; employee
benets services, namely, processing, administering, and
managing employee benet plans concerning insurance
and nance; insurance services, namely, underwriting,
issuing and administration of life insurance; issuance
and administration of annuities; insurance brokerage
services; investment services, namely, asset acquisition,
consultation, development and management services;
investment of funds for others; annuity services, namely,
account and investment administration and the investment
and distribution of annuity funds; nancial services,
namely, investment fund transfer and transaction services;
nancial services, namely, providing an investment option
available for variable annuity and variable life insurance
products; nancial and investment services, namely, asset
and investment acquisition, consultation, advisory and
development; insurance and nancial information and
consultancy services”; (ii) U.S. Reg. No. 5467089, registration
date 15 May 2018 (scent mark consisting “of a sweet, slightly
musky, vanilla fragrance, with slight overtones of cherry,
combined with the smell of a salted, wheat-based dough”
for “[t]oy modeling compounds”); (iii) U.S. Reg. No. 5877077,
registration date 8 October 2019 (sound mark consisting
“of a man yelling “EEEEEEEYOOOOOO” in falsetto with “E”
drawn out followed by a “U” sound” for “[m]usical sound
recordings; musical video recordings”). United States Patent
and Trademark Ofce. Trademark Electronic Search System
(TESS) (Word and/or Design Mark Search (Structured)
search-trademark-database> accessed 23 November 2019
(search criteria: ‘Search Term’ “6”[MD] as ‘Mark Drawing
Code’).
37 Trademark Manual of Examining Procedure, Chapter 800,
§ 807 ‘Drawing’ (October 2018)
RDMS/TMEP/current#/current/TMEP-800d1e1103.html>
accessed 12 April 2019.
38 ibid.
39 A mark not in standard characters is if: (i) the applicant
2020
Inês Ribeiro da Cunha and Jurgita Randakevičiūtė-Alpman
380
3
a written description40 indicating all the signicant
features of a mark41. Thirdly, “one specimen for
is claiming a particular font style, size, or color of words,
letters, or numbers; (ii) the mark contains a design element;
(iii) the mark includes non-Latin characters; (iv) the mark
includes non-Roman or non-Arabic numerals; (v) the mark
includes uncommon punctuation or diacritical marks;
(vi) the mark is three-dimensional, or a conguration of
the goods or packaging; (vii) the drawing includes broken
lines to show position or placement or to indicate a portion
of the product or packaging that is not part of the mark;
(viii) the mark includes color; (ix) the mark includes
motion; (x) the mark is a sound, scent, or other non-visual
mark; (xi) the mark appears in standard characters, but an
element of the mark is unclear or ambiguous; (xii) the mark
consists of characters from the standard character set,
but the characters are displayed in a manner that affects
the meaning or signicantly contributes to the overall
commercial impression of the mark, such as using standard
characters that create emoticons (Trademark Manual of
Examining Procedure, Chapter 800, § 808.01 ‘Guidelines for
Requiring Description’ (October 2018)
gov/RDMS/TMEP/current#/current/TMEP-800d1e2086.
html> accessed 27 November 2019).
40 Trademark Manual of Examining Procedure, Chapter 800,
§ 808.01 ‘Guidelines for Requiring Description’ (October
2018)
current/TMEP-800d1e2086.html> accessed 27 November
2019. In an application for a mark in standard characters,
a description may be included and, on the request of the
trade mark examining attorney, must be included (Patents,
Trademarks and Copyrights, 37 C.F.R. § 2.37 (2019))
41 ibid, § 808.02 ‘Description Must Be Accurate and Concise’
(October 2018)
current#/current/TMEP-800d1e2155.html> accessed 26
November 2019. In principle, under U.S. trade mark law, “[a]
drawing depicts the mark sought to be registered” (Patents,
Trademarks and Copyrights, 37 C.F.R. § 2.52 (2019)),
however, a description is also compulsory for any mark
not in standard characters and, at times, under the request
of an examining attorney, it must be submitted even if a
mark appears in standard characters (Trademark Manual of
Examining Procedure, Chapter 800, § 808.01 ‘Guidelines for
Requiring Description’ (October 2018)
gov/RDMS/TMEP/current#/current/TMEP-800d1e2078.
html> accessed 26 November 2019). In comparison to
EU trade mark law and EUIPO Guidelines indicating that
a description is an optional requirement in the cases
where it is allowed and cannot replace the representation
of the mark or extend its scope of protection (i.e. the
representation denes the subject-matter of the trade
mark applied for), the U.S. trade mark law and Trademark
Manual of Examining Procedure establish not only more
detailed requirements with regard to the description of the
U.S. trade marks, but also gives an important role to the it
when depicting/dening sound, scent and other non-visual
marks. On the description requirement under EU trade
each class, showing use of the mark in commerce
on or in connection with the goods, or in the sale
or advertising of the services” must be submitted42.
These formal requirements may vary according to
the type of sign that is sought to be registered.
12
Apart from these formal requirements, each mark
must comply with the substantive prerequisites:
it (i) has to have a distinctive character43; (ii) has
to be in use44; and (iii) must overcome the bars to
protection established by the Trademark Act, the
most signicant of which in the context of non-
traditional marks is the functionality45. While
providing evidence on the use of a mark is usually not
a difcult task, the establishment of the distinctive
character and dealing with functionality issues can be
more complicated. Certain types of non-traditional
marks (e.g., unique sound marks) may be deemed
to be inherently distinctive46, whereas color, scent
mark law, see: EUTMR and Guidelines for Examination of
European Union Trade Marks, Part B ‘Examination’. Section
2. ‘Formalities’ 1 October 2017
ohimportal/en/trade-mark-guidelines-pdf> accessed 26
November 2019.
42 Trademark Manual of Examining Procedure, Chapter 900,
§ 904 ‘Specimens’ (October 2018) 
RDMS/TMEP/current#/current/TMEP-900d1e489.html>
accessed 23 November 2019; also see: Trademark Manual
of Examining Procedure, Chapter 900, § 904.03 ‘Material
Appropriate as Specimens for Trademarks’ (October 2018)
TMEP-900d1e636.html> accessed 23 November 2019;
Trademark Manual of Examining Procedure, Chapter 1300, §
1301.04 ‘Specimens of Use for Service Marks’ (October 2018)
TMEP-1300d1e266.html> accessed 23 November 2019;
Trademark Manual of Examining Procedure, Chapter 900 §,
904.01(a) ‘More than One Item Specied in a Class’ (October
2018)
current/TMEP-900d1e530.html> accessed 23 November
2019; Patents, Trademarks and Copyrights, 37 C.F.R. §2.56-
§2.59 (2019).
43 Trademark Act of 1946, 15 U.S.C. § 1052 and § 1127 (2019).
44 ibid. Also a bona de intention to use any word, name,
symbol, or device, or any combination thereof in commerce
can be sufcient to full the use requirement.
45 Trademark Act of 1946, 15 U.S.C. § 1052 (e) (2019).
46 E.g.: (i) U.S. Reg. No. 5575905, registration date 2 October
2018 (sound mark consisting “of the spoken words THE
RIGHT WAY, NOT THE EASY WAY, with an emphasis
on the words RIGHT and EASY” for “[a]ir duct cleaning
services; Drain and sewer cleaning and rootering services;
Installation and repair of heating, ventilating and air
conditioning equipment; Installation and replacement
New types of marks available after the European Union Trade Mark Reform
2020
381
3
and commonplace sound marks can almost never
possess this feature47 and must be accompanied by
service for water heaters; Installation of solar energy
systems and alternative energy products for residential and
commercial use; Installation, maintenance and repair of
water ltration, softening, reverse osmosis, chemical feed
pump, specialty cartridge and housing, water, and drain and
sewer systems; Plumbing services; Repair or maintenance of
gas water heaters; Installation and repair of air conditioning
apparatus”); (ii) U.S. Reg. No. 5905067, registration date 5
November 2019 (sound mark consisting “of Instrumental
work performed by two pianos in the key of B-major that
is comprised of a ve-note melody of D#5, E5, F#5, B4,
and ending on the B4 and B5 octaves and accompanied
by two B (tonic) chords” for “[i]nsurance underwriting
and administration services for all types of insurance;
providing underwriting and administration services for
pension funds; residential and commercial mortgage
lending services; real estate brokerage and management
services; mutual fund brokerage and investment services,
namely, investment banking and funds investment;
nancial retirement planning services; employee
benets services, namely, processing, administering, and
managing employee benet plans concerning insurance
and nance; insurance services, namely, underwriting,
issuing and administration of life insurance; issuance
and administration of annuities; insurance brokerage
services; investment services, namely, asset acquisition,
consultation, development and management services;
investment of funds for others; annuity services, namely,
account and investment administration and the investment
and distribution of annuity funds; nancial services,
namely, investment fund transfer and transaction services;
nancial services, namely, providing an investment option
available for variable annuity and variable life insurance
products; nancial and investment services, namely,
asset and investment acquisition, consultation, advisory
and development; insurance and nancial information
and consultancy services”; (iii) U.S. Reg. No. 5842808,
registration date 27 August 2019 (sound mark consisting “of
a sound mark comprising the word “Oralé” sung to a melody
consisting of the following musical notes: G# A# B” for “[a]
utomobile dealership services”). United States Patent and
Trademark Ofce. Trademark Electronic Search System
(TESS) (Word and/or Design Mark Search (Structured)
search-trademark-database> accessed 23 November 2019
(search criteria: ‘Search Term’ “6”[MD] as ‘Mark Drawing
Code’).
47 Sheldon W Halpern, Craig Allen Nard and Kenneth L
Port, Fundamentals of US Intellectual Property Law. Copyright,
Patent and Trade mark (5th Edition, Wolters Kluwer 2015) 69;
Jerome Gilson and Anne Gilson LaLonde, ‘Cinnamon Buns,
Marching Ducks and Cherry-Scented Racecar Exhaust:
Protecting Nontraditional Trademarks’ [2005] 95 (4) The
Trademark Reporter 773, 776. There has been one exception
with regard to one smell mark (a lemon fragrance ‘for toner
for digital laser printers, photocopiers, microche printers
evidence demonstrating that, due to their use in
the market place, these marks clearly indicate to
consumers the source of the product or service48,
i.e. have acquired secondary meaning. Secondary
meaning is established, when “in the minds of the
public, the primary signicance of a product feature
is to identify the source of the product, rather
than the product itself”49. Additionally, quite often
the applicants need to prove the non-functionality
of a mark
50
. This means that the product’s feature
which one wishes to register as a trade mark must
not be essential to the use or purpose of the good or
service and affect the cost or quality of it51. If, based
on at least one of these two criteria, a product feature
is not functional from the utilitarian perspective,
it can be aesthetically functional on the condition,
that an exclusive use of that feature would place
competitors at a signicant non-reputation-related
disadvantage52. These substantive requirements
apply to all types of non-traditional marks, but to a
certain extent, it may vary depending on their type.
I. Color Marks
13 In 1995, the Supreme Court conrmed that a single
color could serve as a trade mark, establishing a
rather broad scope of registrable signs53. Formal
requirements for the applications of such marks
before the USPTO are in accordance with this case
law. The to-be-registered sign should be depicted in a
and telecopiers’
application-process/search-trademark-database> accessed
25 November 2019) Serial No. 75120036 (abandoned)
(see: Thomas P Arden, Protection of Nontraditional Marks
(International Trademark Association, 2000) 55.)
48 Douglas A Rettew, ‘Offbeat Page in Branding Playbook’
[2012] The National Law Journal
com/en/insights/offbeat-page-in-branding-playbook.
html> accessed 12 April 2019; Trademark Act of 1946, 15
U.S.C. § 1052 (f) (2019).
49 Inwood Laboratories v. Ives Laboratories, 456 U.S. 844, 851,
n. 1 (1982) citing Kellogg Co. v. National Biscuit Co., 305 U. S.
111, 118 (1938).
50 15 U.S.C. § 1952 (f) (2019).
51 Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 165
(1995). Also see: Lydia Pallas Loren and Joseph S Miller,
Intellectual Property Law: Cases and Materials (Semaphore
Press 2018) 547.
52 Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 169
(1995).
53 Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995).
2020
Inês Ribeiro da Cunha and Jurgita Randakevičiūtė-Alpman
382
3
color drawing, which consists of a substantially exact
representation of a mark as used or intended to be
used on the goods
54
. The latter must be accompanied
by a description consisting of: (i) a color claim naming
the color for which the protection is being sought;
and (ii) a separate statement describing where the
color appears in the mark
55
. Finally, the applicant
must submit a specimen of the mark demonstrating
the use of the color in commerce on/in connection
with the relevant goods and/or services56.
14
A single color is capable of registration as a trade
mark, if its secondary meaning in the marketplace
and non-functionality can be demonstrated
57
. The
former prerequisite can be evaluated by analyzing
the consumers’ attitude with respect to a certain
mark58. If, over time, consumers begin treating a
particular color on a product or its packaging as
identifying and distinguishing a particular brand,
this color has acquired a secondary meaning59. In
54 Trademark Manual of Examining Procedure, Chapter 800, §
807.07(a) ‘Requirements for Color Drawings’ (October 2018)
TMEP-800d1e1488.html> accessed 27 November 2019.
Also see: Chapter 1200, § 1202.05(d)(i) ‘Drawings of Color
Marks in Trademark Applications’ (October 2018)
tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-
1200d1e2169.html> accessed 27 November 2019
55 Trademark Manual of Examining Procedure, Chapter 800,
§ 807 ‘Drawing’ (October 2018)
RDMS/TMEP/current#/current/TMEP-800d1e1103.html>
accessed 27 November 2019
56 Trademark Manual of Examining Procedure, Chapter 900,
§ 904.02(c)(ii) ‘Specimens for Marks Comprising Color’
(October 2018)
current#/current/TMEP-900d1e608.html> accessed 27
November 2019.
57 Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 163-165
(1995). However, according to the legal scholarly literature,
the threshold to prove acquired distinctiveness, in order to
register certain signs as trade marks in the U.S., can be very
low (e.g.: Irene Calboli, ‘Hands Off “My” Colors, Patterns,
and Shapes! How Non-Traditional Trademarks Promote
Standardization and May Negatively Impact Creativity and
Innovation’ in Irene Calboli and Martin Senftleben (eds), The
Protection of Non-Traditional Trademarks. Critical Perspectives
(OUP 2018) 294 citing Jake Linford, A Linguistic Justication
for Protecting “Generic” Trademarks, 17 Yale J.L. & Tech. 110
(2015); Christian Faith Fellowship Church v. Adidas AG, 841.
F.3d 986 (Fed. Cir. 2016)).
58 Barton Beebe and others, Trademarks, Unfair Competition and
Business Torts (2nd Edition, Wolters Kluwer 2016) 66
59 Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 163
(1995).
addition to the latter direct evidence, circumstantial
proof also plays an important role in the discussed
situations. This proof consists of data concerning
the advertisement of the mark and its expenditures,
length and exclusivity of use, as well as success and
volume of sales60.
15
While addressing the functionality, it is analyzed
whether the registration of such a mark would
undermine competition by allowing the applicant
to control a “useful product feature”
61
, e.g., color,
with the help of the trade mark law62. Colors can
be regarded as functional, when, e.g., they are an
industry standard used for safety reasons, also
if it is more economical to manufacture or use
them63. When a color does not possess utilitarian
functionality, it nevertheless can be aesthetically
functional64, if “the exclusive use of the feature
[e.g. color] would put competitors at a signicant
non-reputation-related disadvantage”65. In one
case, the black color for outboard motors, due to its
compatibility to boat colors and ability to decrease
apparent motor size, was regarded as essential for
engine manufacturers to compete and thus held as
functional66.
60 Thomas J McCarthy Trademarks and Unfair Competition
(Volume 2, Thomson West 2007) § 15:30; Barton Beebe and
others, Trademarks, Unfair Competition and Business Torts (2nd
Edition, Wolters Kluwer 2016) 66.
61 Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 169
(1995).
62 ibid.
63 Trademark Manual of Examining Procedure, Chapter
1200, §1202.05(b) ‘Functional Color Marks Not Registrable’
(October 2018)
current#/current/TMEP-1200d1e2081.html> accessed 19
January 2020.
64 Gary R Lea, ‘Special marks: after 20 years, not so special after
all?’ [2015] 20(2) Communications Law, 40, 42 citing Michael
Mirales, ‘Aesthetic Functionality’, 21 Texas Intellectual
Property Law Journal 155 (2013).
65 Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 165
(1995).
66 Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1532-
1533, 32 U.S.P.Q.2d 1120 (Fed. Cir. 1994). Other examples:
(i) in the case Christian Louboutin v. Yves Saint Laurent
America, the U.S. District Court ruled that the red outsoles
serve non-trademark functions other than as a source
identier (e.g., “to attract, to reference, to stand out, to
blend in, to beautify, to endow with sex appeal”), thus,
such a trade mark is aesthetically functional and is a threat
to legitimate competition in the designer shoe market
(Christian Louboutin v. Yves Saint Laurent America, 778
New types of marks available after the European Union Trade Mark Reform
2020
383
3
II. Scent and Taste Marks
16
In 1990, the TTAB held that the scent of Plumeria
blossoms could serve as a trade mark for sewing
thread and embroidery yarn67. With regard to
the formal requirements, instead of a drawing,
the applicant is required to submit a detailed
description of a mark68. Since there is not much
guidance regarding the description requirement,
the fullment of this prerequisite depends on each
individual case. Similar requirements also apply to
the registration of taste marks. Applicants for both
types of marks are also required to submit a specimen
containing the scent or avor, which matches the
description
69
. This means that, generally, a specimen
will consist of the actual goods themselves; thus, in
order for the USPTO to correctly direct a specimen
to the examining attorney, during the submission it
should be indicated that it is a specimen for a scent
or avour mark application70.
17
With regard to the distinctiveness requirement,
in 1990 it was also held that the scent of Plumeria
blossoms could be registered for sewing thread and
embroidery yarn not for its inherent distinctiveness,
but because it had acquired a secondary meaning.
The latter position was based on the arguments
that: (i) the applicant was the only one marketing
threads and yarns with a scent; (ii) the scent was a
feature added by the applicant and not inherent or
F. Supp. 2d 445, 453 (S.D.N.Y. 2011)). Later, the Second
Circuit of the Court of Appeals in the same case ruled that
red outsoles could be protected as a trade mark without
analyzing the functionality aspect (Christian Louboutin
S.A. v. Yves Saint Laurent America Holding, Inc., 696 F.3d
206 (2nd Cir. 2012)); (ii) the USPTO TTAB held that the
color black for oral packaging is aesthetically functional,
because of a competitive need for others in the industry
to use black in connection with oral arrangements
to communicate a desired sentiment or occasion, such
as elegance, bereavement or Halloween, (In re Florists’
Transworld Delivery Inc., 106 USPQ2d 1784, 1791 (TTAB
2013)).
67 In re Clarke, 17 U.S.P.Q.2d (BNA) 1238 (TTAB 1990).
68 Trademark Manual of Examining Procedure, Chapter 800,
§ 807.09 ‘“Drawing” of Sound, Scent, or Non-Visual Mark’
(October 2018)
current#/current/TMEP-800d1e1656.html> accessed 27
November 2019.
69 Trademark Manual of Examining Procedure, Chapter 900, §
904.03(m) ‘Specimens for Scent and Flavor Marks’ (October
2018)
current/TMEP-900d1e994.html> accessed
27 November 2019.
70 ibid.
natural to the goods; (iii) the applicant advertised
and promoted the scented feature; and (iv) it was
demonstrated that purchasers had recognized the
applicant as the source of the scented goods71.
18
However, in a later case, a lemon fragrance, due
to its inherent distinctiveness, was approved as a
trade mark for laser printers and photocopiers72.
Nevertheless, inherent distinctiveness of a smell
is not common and demonstrating it can be a very
challenging task for the applicants
73
. For instance,
on the Principal Register there are only four valid
registrations of scent marks74. They have been
approved after the evidence on their acquired
71 In re Clarke, 17 U.S.P.Q.2d (BNA) 1238, 1238-1240 (TTAB
1990).
72 A lemon fragrance “for toner for digital laser printers,
photocopiers, microche printers and telecopiers”
www.uspto.gov/trademarks-application-process/search-
trademark-database> accessed 25 November 2019 (search
criteria: ‘Search Term’ ‘75120036’ as ‘Serial or Registration
Number’)Serial No. 75120036 (abandoned); Thomas P Arden,
Protection of Nontraditional Marks (International Trademark
Association, 2000) 55.
73 Carolina Castaldi, ‘The Economic Management of Non-
Traditional Trademarks. Why, How Much, What and Who’
in Irene Calboli and Martin Senftleben (eds) The Protection
of Non-Traditional Trademarks: Critical Perspectives (OUP 2019)
267 citing Amanda E. Compton, Acquiring a Flavor for
Trademarks: There’s No Common Taste in the World, 8 Nw.
J. Tech. & Intell. Prop. 340 (2009).
74 (i) U.S. Reg. No. 2463044, registration date 26 June 2001
(cherry scent for “synthetic lubricants for high performance
racing and recreational vehicles”); (ii) U.S. Reg. No. 4057947,
registration date 22 November 2011 (high impact fragrance
primarily consisting of musk, vanilla, rose, and lavender
“for hair conditioners, namely, curl creams, hydrating
styling creams, intense moisturizing masques, and styling
and nishing oils”); (iii) U.S. Reg. No. 4754435, registration
date 16 June 2015 (the scent of bubble gum for “shoes,
sandals, ip ops, and accessories, namely, ip op bags”);
(iv) U.S. Reg. No. 5467089, registration date 15 May 2018
(a scent of a sweet, slightly musky, vanilla fragrance, with
slight overtones of cherry, combined with the smell of a
salted, wheat-based dough for “toy modeling compounds”).
United States Patent and Trademark Ofce. Trademark
Electronic Search System (TESS) (Word and/or Design Mark
Search (Structured)
application-process/search-trademark-database> accessed
12 April 2019 (search criteria: (i) ‘Search Term’ “6”[MD]
as ‘Mark Drawing Code’ AND ‘Search Term’ ‘fragrance’ as
‘Description of Mark’; or (ii) ‘Search Term’ “6”[MD] as ‘Mark
Drawing Code’ AND ‘Search Term’ ‘scent’ as ‘Description of
Mark’; or (iii) ‘Search Term’ “6”[MD] as ‘Mark Drawing Code’
AND ‘Search Term’ ‘scent’ as ‘Description of Mark’).
2020
Inês Ribeiro da Cunha and Jurgita Randakevičiūtė-Alpman
384
3
distinctiveness has been provided75. Thus, it seems
that the standards for the distinctiveness of scent
marks are rather high.
19
When refusing the registration of fragrances as trade
marks, another argument is that they are functional
and, due to the “competitive need for free access to
pleasant scents and fragrances”
76
, the protection for
such trade marks should not be granted. However,
according to the TTAB, a registration of a mark
should not be denied simply because the scent may
be pleasing77. Although there is not much guidance
on the functionality aspects of smell marks, it
seems that U.S. law requires an extensive amount
of evidence thereof78 making it a challenging
procedure79.
75 (i) U.S. Reg. No. 2463044, registration date 26 June 2001
(cherry scent for “synthetic lubricants for high performance
racing and recreational vehicles”), see: Response to Ofce
Action, 15 November 1996
umentviewer?caseId=sn74720993&docId=IPC20061018
144052#docIndex=14&page=1> accessed 12 April 2019;
(ii) U.S. Reg. No. 4057947, registration date 22 November
2011 (high impact fragrance primarily consisting of musk,
vanilla, rose, and lavender “for hair conditioners, namely,
curl creams, hydrating styling creams, intense moisturizing
masques, and styling and nishing oils”), see: Response
to Ofce Action, 16 March 2010 <http://tsdr.uspto.gov/
documentviewer?caseId=sn77755814&docId=ROA201003
17174627#docIndex=20&page=1> accessed 12 April 2019;
(iii) U.S. Reg. No. 4754435, registration date 16 June 2015
(the scent of bubble gum for “shoes, sandals, ip ops,
and accessories, namely, ip op bags”), see: Response to
Ofce Action, dated 12 January 2015 <http://tsdr.uspto.
gov/documentviewer?caseId=sn86265443&docId=ROA201
50112173029#docIndex=8&page=1> accessed 12 April 2019;
(iv) U.S. Reg. No. 5467089, registration date 15 May 2018
(a scent of a sweet, slightly musky, vanilla fragrance, with
slight overtones of cherry, combined with the smell of a
salted, wheat-based dough for “toy modeling compounds”),
see: Response to Ofce Action, 27 November 2017 
tsdr.uspto.gov/documentviewer?caseId=sn87335817&docI
d=ROA20171128174227#docIndex=11&page=1> accessed 12
April 2019.
76 In re Clarke, 17 U.S.P.Q.2d (BNA) 1238, 1238 (TTAB 1990).
77 University Book Store v. University of Wisconsin Bd. Of
Reagents, 33 U.S.P.Q.2d (BNA) 1385, 1405 (TTAB 1994)
78 Trademark Manual of Examining Procedure, Chapter
1200, §1202.13 ‘Scent, Fragrance, or Flavor’ (October 2018),
TMEP-1200d1e2882.html> accessed 12 April 2019.
79 Carolina Castaldi, ‘The Economic Management of Non-
Traditional Trademarks. Why, How Much, What and Who’
in Irene Calboli and Martin Senftleben (eds) The Protection
of Non-Traditional Trademarks: Critical Perspectives (OUP 2019)
All this may help to explain the low number of smell
marks on the Principal Register of the USPTO.
20
The issue of distinctiveness and functionality of
avor marks is treated similarly to the smell ones:
the applicant must submit substantial proof of
secondary meaning and needs to overcome the non-
functionality hurdle80. For instance, when deciding
on the registration of a taste mark, the TTAB held that
an orange avor is such an essential characteristic
of pharmaceuticals that, even though this avor is
“unique”81, the consumers will not perceive it as a
trade mark without being educated to do so, thus,
substantial evidence of acquired distinctiveness
should be shown82. Additionally, this avor was
regarded to be functional and, therefore, incapable
of serving as a trade mark for an antidepressant
pharmaceutical product because “the medicinal
ingredients in Pharmaceuticals generally have
a disagreeable taste that may be masked so that
patients will be more likely to take the medicine”83.
In such a situation, the orange taste performs a
utilitarian function and its monopolization would
hinder competition in the pharmaceutical market.
III. Sound Marks
21
The rst sound mark consisting of musical notes
G, E, C played on chimes was registered in 1950 for
broadcasting services
84
. According to the Trademark
267 citing Amanda E. Compton, Acquiring a Flavor for
Trademarks: There’s No Common Taste in the World, 8 Nw.
J. Tech. & Intell. Prop. 340 (2009).
80 According to the USPTO Trademark Electronic Search System
(TESS) (Word and/or Design Mark Search (Structured)),
there are no ‘live’ registrations of taste (avor) trademarks
search-trademark-database> accessed 25 April 2019 (search
criteria: (i) ‘Search Term’ “6”[MD] as ‘Mark Drawing Code’
AND ‘Search Term’ ‘taste’ as ‘Description of Mark’; and (ii)
‘Search Term’ “6”[MD] as ‘Mark Drawing Code’ AND ‘Search
Term’ ‘avor’ as ‘Description of Mark’).
81 In re NV Organon, 79 U.S.P.Q.2d (BNA) 1639, 1650 (TTAB
2006)
82 ibid.
83 In re NV Organon, 79 U.S.P.Q.2d (BNA) 1639, 1648-1649
(TTAB 2006).
84 Serial No. 71541873, U.S. Reg. No. 0523616 (expired)
search-trademark-database> accessed 12 April 2019. Also
see: Roberto Carapeto, ‘A Reection About the Introduction
of Non-Traditional Trade marks’ [2016] 34 Waseda Bulletin
New types of marks available after the European Union Trade Mark Reform
2020
385
3
Manual of Examining Procedure, when registering
such trade marks, applicants are not required to
submit a drawing85. Instead, as in the case of all the
non-visual marks, a detailed description of a sound,
including any words or lyrics, supplemented and
claried by an audio reproduction of that sound
mark86, must be presented87. If a mark comprises
music or words set to music, an application should
include the musical score sheet to supplement
or clarify the description of the mark
88
. Finally, a
specimen containing an audio or video and showing
how a mark is used in connection with the goods/
services must be submitted89.
22 According to the TTAB, sound marks are dependent
on aural perception, which “may be as eeting as the
sound itself”
90
. It distinguishes two types of sound
marks: (i) unique, different or distinctive sounds
capable of being registered without any proof of a
secondary meaning; and (ii) commonplace sounds
registrable after acquiring the secondary meaning
91
.
In order to fall into the rst group, a sound must
be “so inherently different or distinctive that it
attaches to the subliminal mind of the listener, to
be awakened when heard, and to be associated with
of Comparative Law 25, 26-27; Michael B Sapherstein,
‘The Trademark Registrability of the Harley-Davidson
Roar: A Multimedia Analysis’ [1998] Boston College
Intellectual Property & Technology Forum
org/wp-content/uploads/2011/07/48-THE-TRADEMARK-
REGISTRABILITY-OF-THE-HARLEY.pdf> accessed 12 April
2019.
85 Trademark Manual of Examining Procedure, Chapter
800, § 807.09 ‘“Drawing” of Sound, Scent, or Non-Visual
Mark’(October 2018)
TMEP/current#/current/TMEP-800d1e1656.html> accessed
27 November 2019.
86 ibid. An audio le in electronic format, when submitting an
online application for a registration of a trade mark, or any
other medium (compact discs (“CDs”), digital video discs
(“DVDs”), videotapes, or audiotapes) in case of paper lling.
87 Trademark Manual of Examining Procedure, Chapter 800,
§ 807.09 ‘“Drawing” of Sound, Scent, or Non-Visual Mark’
(October 2018)
current#/current/TMEP-800d1e1656.html> accessed 27
November 2019.
88 ibid.
89 ibid.
90 In re General Electric Broadcasting Company, Inc., 199
U.S.P.Q. (BNA) 560, 563 (TTBA 1978).
91 ibid.
the source or event with which it is struck”92. This
does not mean that the commonplace sounds cannot
function as trade marks; however, differently than
the arbitrary marks, the non-distinctive ones must
be supported by strong evidence demonstrating
that present and prospective purchasers “recognize
and associate the sound with services offered
and/or rendered exclusively with a single, albeit
anonymous, source”93.
23
Regardless of the above-described situation, obtaining
a sound mark can still be a lengthy and complicated
process, especially, when it comes to onomatopoeias,
i.e. animal, human or other noises occurring in the
nature94, which can be regarded as falling under the
category of these commonplace sounds. An example
of a successfully registered onomatopoeia under U.S.
law is the MGM lion’s roar
95
. However, while dealing
with the application for a trade mark consisting of
the sound of a Harley-Davidson motorcycle engine,
the TTAB stated that it should be considered at trial,
whether the “applicant’s asserted mark should be
refused registration as a functional by-product of,
or descriptive of, motorcycle engines, that the
opposers, and some of the others, claim a right to
use”96.
Thus, if this application had not been withdrawn97,
the functionality test could have been applied and
might have been an obstacle for obtaining the
registration.
92 ibid.
93 ibid.
94 Ralf Sieckmann, ‘Sound Trade and Service Marks’ in Kai
Bronner, Rainer Hirt (eds), Audio Branding. Brands, Sounds and
Communication (Nomos 2009) 193.
95 Serial No. 73553567, U.S. Reg. No. 1395550 (the sound of
a lion’s roar used in connection with applicant’s movie
production)
ss&state=4803:loq824.1.1> accessed 27 November 2019
96 Kawasaki Motors Corp., U.S.A. v. H-D Michigan, Inc. et al. 43
U.S.P.Q.2d. (BNA) 1521, 1521 (TTAB 1997)
97 Daniel R Bumpus, ‘BING, BANG, BOOM: An Analysis of In re
Vertex Goup LLC and the Struggle for Inherent Distinctiveness
in Sound Marks Made During a Product’s Normal Course of
Operation’ [2011] 21(2) The Federal Circuit Bar Journal 245,
257 citing John O’Dell, Harley-Davidson Quits Trying to Hog
Sound, L.A. Times (June 21, 2000), https://articles.latimes.
com/2000/jun/21/business/-43145.
2020
Inês Ribeiro da Cunha and Jurgita Randakevičiūtė-Alpman
386
3
IV. Motion and Hologram Marks
24 In case a to-be-registered sign contains a repetitive
motion of short duration98or a hologram99, the
applicant must submit a drawing, which may
depict: (i) a single point in the movement; or (ii) up
to ve freeze frames showing various points in
the movement, whichever best represents the
commercial impression of the mark100. Every
application must contain “a detailed written
description of the mark”101. Finally, a specimen
showing the entire motion and illustrating the
commercial impression of a mark must be presented
in the form of a video, a series of still photos, or
screen shots102. It is essential for the latter specimen
to show the motion mark in association with the
goods or services and not simply in a video103.
25
Since the movement marks are regarded as being the
closest to the traditional visual ones, their evaluation
with regard to the substantive requirements, i.e.
distinctiveness and non-functionality, is similar104.
However, it might be challenging to prove that the
98 Trademark Manual of Examining Procedure, Chapter 800,
§ 807.11 ‘Marks With Motion’ (October 2018)
tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-
800d1e1699.html> accessed 27 November 2019. E.g.: a
three-dimensional spray of water issue from the rear of
jet propelled watercraft (Serial No. 74321288; U.S. Reg.
No. 1946170
ess&state=4810:wwvgep.1.1> accessed 27 November 2019).
99 Gary R Lea, ‘Special marks: after 20 years, not so special
after all?’ [2015] 20(2) Communications Law 40, 43. E.g.:
a holographic logo used in connection with baseball
trading cards (Serial No. 76275803; U.S. Reg. No.
2710652
state=4810:wwvgep.1.1> accessed 27 November 2019)
100 Trademark Manual of Examining Procedure, Chapter 800,
§ 807.11 ‘Marks With Motion’ (October 2018)
> accessed 12
tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-
800d1e1699.html> accessed 12 April 2019.
101 ibid.
102 Trademark Manual of Examining Procedure, Chapter 900,
§ 904.03 (l) ‘Specimens for Motion Marks’ (October 2018)
TMEP-900d1e966.html> accessed 27 November 2019.
103 ibid.
104 Jerome Gilson and Anne Gilson LaLonde, ‘Cinnamon Buns,
Marching Ducks and Cherry-Scented Racecar Exhaust:
Protecting Nontraditional Trademarks’ [2005] 95 (4) The
Trademark Reporter 773, 806.
motion mark actually serves as a source identier105.
Therefore, a large part of motion marks is registered
for electronic goods or software, where the mark is
conveyed to the consumer via a display screen106.
26
Taking into consideration all the aforementioned
aspects of non-traditional trade mark registration, it
is clear that under U.S. trade mark law, the drawing
requirement does not apply to all the types of marks.
This way, the formal prerequisites under U.S. law
for registering non-traditional marks, especially
non-visual ones, are more exible and provide
more opportunities for obtaining protection for a
wider variety of signs than the pre-reform EU legal
system. However, despite the more lenient formal
requirements established by U.S. trade mark law, the
non-traditional marks must overcome the threshold
of the substantive requirements107 that, depending
on the type of a mark to be registered, may vary.
D. The Removal of the
Graphic Representation
Requirement in EU Law
27
Since 1 October 2017, the EUTMR together with
the EUTMIR, and the European Union Trade Mark
Delegated Regulation108 are the main documents
governing the EU trade mark protection-related
aspects. With regard to the registration of non-
traditional marks, the most important provision
is Art. 4 EUTMR establishing that, in order to be
registered, a trade mark, apart from being able to
distinguish the goods or services of one undertaking
105 Susan J Keri, Jonathan Burkinshaw and Elisabeth A
Langworthy, ‘Moving with the Times: Motion Marks in
Canada and the United States’ [2011]
INTABulletin/Pages/MovingwiththeTimesMotionMarks.
aspx> accessed 12 April 2019
106 Julie D Shirk and Monica Riva Talley, ‘I second that
e-motion: protecting motion marks’ [2015]
sternekessler.com/news-insights/publications/i-second-e-
motion-protecting-motion-marks> accessed 12 April 2019.
107 Especially, distinctiveness and non-functionality.
108 Commission Delegated Regulation (EU) 2017/1430 of 18 May
2017 supplementing Council Regulation (EC) No 207/2009 on
the European Union trade mark and repealing Commission
Regulations (EC) No 2868/95 and (EC) No 216/96 [2017]
OJ L 205/1. Since 13 May 2018, repealed by Commission
Delegated Regulation (EU) 2018/625 of 5 March 2018
supplementing Regulation (EU) 2017/1001 of the European
Parliament and of the Council on the European Union trade
mark, and repealing Delegated Regulation (EU) 2017/1430
[2018] OJ L 104/1.
New types of marks available after the European Union Trade Mark Reform
2020
387
3
from those of other undertakings109, 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.”110
Additionally, Recital 10 of the EUTMR indicates
that “a sign should be permitted to be represented
in any appropriate form using generally available
technology, and thus not necessarily by graphic
means, as long as the representation is clear, precise,
self-contained, easily accessible, intelligible, durable
and objective.”111 The latter provision, together
with the aforementioned Art. 4 provides the formal
criteria necessary to full when registering both
traditional and non-traditional trade marks.
28
Pursuant to Art. 31 (3) EUTMR, an application for
an EU trade mark shall comply with the formal
requirements laid down in the EUTMR and in
the EUTMIR112. The more practical aspects of the
aforementioned requirements are established
by the EUTMIR, which provides guidance on the
implementation of the provisions of the EUTMR.
In particular, the Art. 3 EUTMIR develops the
representation requirements of the EU trade
marks in light of the Art. 4 (b) EUTMR modifying
the previous Rule 3 of the Commission Regulation
(EC) No 2868/95 (the ‘CTMIR’)113, which was suitable
109 EUTMR, art 4 (a).
110 ibid, art 4 (b).
111 ibid, recital 10.
112 EUTMR, art 31 (3).
113 Commission Regulation (EC) No 2868/95 of 13 December
1995 implementing Council Regulation (EC) No 40/94 on
the Community trade mark, rule 3 (since 30 September 2017
no longer in force): “(1) If the applicant does not wish to
claim any special graphic feature or colour, the mark shall
be reproduced in normal script, as for example, by typing
the letters, numerals and signs in the application. The use of
small letters and capital letters shall be permitted and shall
be followed accordingly in publications of the mark and in
the registration by the Ofce.
(2) In cases other than those referred to in paragraph 1 and save
where the application is led by electronic means, the mark
shall be reproduced on a sheet of paper separate from the
sheet on which the text of the application appears. The
sheet on which the mark is reproduced shall not exceed DIN
A4 size (29,7 cm high, 21 cm wide) and the space used for
the reproduction (type-area) shall not be larger than 26,2
cm × 17 cm. A margin of at least 2,5 cm shall be left on the
left-hand side. Where it is not obvious, the correct position
of the mark shall be indicated by adding the word ‘top’ to
each reproduction. The reproduction of the mark shall be
of such quality as to enable it to be reduced or enlarged to a
only for trade marks capable of being represented
graphically.
29
The catalogue of the marks established by the
EUTMIR is similar to the one in the Rule 3 of the
Regulations under the Singapore Treaty on the Law
of Trademarks114. Art. 3 (1) EUTMIR reects Recital
10 and Art. 4 (b) EUTMR demonstrating exibility
with regard to non-traditional trade marks
115
, but
with a willingness to uphold the legal certainty for
the parties involved. The latter aspect is reected
by the emphasis given in Art. 3 (1) EUTMIR on
the necessity that the representation of a trade
mark must conform with the seven prerequisites
established in the Sieckmann judgement116.
size not more than 8 cm wide by 16 cm high for publication
in the Community Trade Mark Bulletin.
(3) In cases to which paragraph 2 applies, the application shall
contain an indication to that effect. The application may
contain a description of the mark.
(4) Where registration of a three-dimensional mark is applied for,
the application shall contain an indication to that effect. The
representation shall consist of a photographic reproduction
or a graphic representation of the mark. The representation
may contain up to six different perspectives of the mark.
(5) Where registration in colour is applied for, the representation
of the mark under paragraph 2 shall consist of the colour
reproduction of the mark. The colours making up the
mark shall also be indicated in words and a reference to a
recognized colour code may be added.
(6) Where registration of a sound mark is applied for, the
representation of the trade mark shall consist of a graphical
representation of the sound, in particular a musical notation;
where the application is led through electronic means, it
may be accompanied by an electronic le containing the
sound. The President of the Ofce shall determine the
formats and maximum size of the electronic le.”
114 Regulations under the Singapore Treaty on the Law of
Trademarks (as in force on November 1, 2011), rule 3
April 2019.
115 EUTMR, art 3 (1): “trade mark shall be represented in any
appropriate form using generally available technology, as
long as it can be reproduced on the register”.
116 Case C-273/00 Sieckmann [2002] ECR I-11770, para 55:
“ a trade mark may consist of a sign which is not in
itself capable of being perceived visually, provided that
it can be represented graphicly, particularly by means of
images, lines or characters, and that the representation is
clear, precise, self-contained, easily accessible, intelligible,
durable and objective.”
2020
Inês Ribeiro da Cunha and Jurgita Randakevičiūtė-Alpman
388
3
30
Art. 3 (2) EUTMIR establishes that the “representation
of the trade mark shall dene the subject matter of
the registration”
117
and, if there is an option to add a
description to the type of mark, it shall accord with
the representation and cannot extend its scope of
protection118. With regard to the latter provision,
when the draft EUTMIR was rst published119,
the International Trademark Association (INTA)
proposed to delete the reference to the type of
mark concerned as the EUTMR does not contain
any provision on a typology of marks, but focuses
on the need to provide for exibility in accordance
with Recital 10 of the EUTMR120. With regard to the
aforementioned suggestion on leaving this provision
“open”, it is possible to state that the added “type
requirement” may bring more certainty for users
and the public, and also make searches of trade
marks easier this way, fullling the criteria set in
the EUTMR, particularly, in Art. 4 (b) EUTMR121.
31
Art. 3 (3) EUTMIR contains a non-exhaustive
list of types of trade marks: (a) word,
(b) gurative, (c) shape, (d) position, (e) pattern,
(f) color, (g) sound, (h) motion, (i) multimedia, and
(j) hologram marks122. The new EU trade mark regime
does not provide any reason to expect any major
changes in practice when registering visual marks
consisting of words or gures and shapes at the
EUIPO
123
. Other visual marks, such as, pattern marks,
were previously considered as “gurative marks” for
formality purposes124, whereas, position marks were
117 EUTMIR, art 3 (2) and art 3 (3).
118 ibid.
119 International Trademark Association (Belgium). Feedback
on the Draft Implementing Regulation, Transparency
register No. 10141574843-32 [2016]
info/law/better-regulation/initiatives/ares-2016-5749866/
feedback/F787_en?p_id=6923> accessed 12 April 2019.
120 ibid.
121 EUTMR, art 4 (b): “ 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.”
122 ibid, art 3 (3).
123 However, due to certain legal changes, the shape marks will
nevertheless be discussed.
124 Guidelines for Examination in the Ofce for Harmonization
in the Internal Market (Trade Marks and Designs) on
Community Trade Marks, Part B ‘Examination’, Section 2
‘Formalities’ 1 February 2016, 19-21
eu/tunnel-web/secure/webdav/guest/document_library/
contentPdfs/law_and_practice/decisions_president/ex15-
regarded as “other marks”
125
, and the registration
of both of these types of marks was available in the
pre-reform period. Apart from the fact that all these
visual marks are now described in a non-exhaustive
list in the EUTMIR, during the reform, no major
amendments were introduced to their registration.
It seems that the graphic representation in the
registration proceedings is still regarded as the
best way of representing these marks, so that the
competent authorities and the public would be able
to identify what exactly is protected, whereas, the
peculiarities of registering other non-traditional
marks, particularly, non-visual ones, may require
further discussion.
I. Shape marks
32
The EUTMIR denes shape marks as “consisting
of, or extending to a three-dimensional shape,
including containers, packaging, the product itself
or their appearance”
126
. The term “extending to” can
be interpreted in the sense that the shape marks
cover not only the shapes per se but also words or
gurative elements that are part of the shape 127.
It could be more difcult to obtain protection for
shapes than for word or gurative marks with regard
to the distinctiveness requirement, since they may
not be perceived by the relevant public in the same
way as other visual marks, such as word or gurative
ones128. The extension of protection provided for
7_en.pdf> accessed 24 May 2019.
125 ibid, 28-30.
126 EUTMIR, art 3 (3) (c).
127 Guidelines for Examination of European Union Trade
Marks, Part B ‘Examination’, Section 4 ‘Absolute Grounds of
Refusal’, Chapter 2 ‘EUTM Denition’ (Article 7(1)(a) EUTMR)
1 October 2017, 5
secure/webdav/guest/document_library/contentPdfs/
law_and_practice/trade_marks_practice_manual/
WP_2_2017/Part-B/04-part_b_examination_section_4_
absolute_grounds_for_refusal/part_B_examination_
section_4_chapter_2/part_B_examination_section_4_
chapter_2_EUTM%20denition_en.pdf> accessed 25
November 2019.
128 See: case C-218/01 Henkel [2004] ECR I-01725, para 52
(Perwoll bottle); joined cases C-456/01 P and 457/01 P
Henkel v OHIM [2004] ECR I-05089, para 38 (washing tablets);
case C-136/02 P Mag Instruments v. OHIM [2004] I-09165, para
30 (three-dimensional torch shapes). For more guidance
on the examination of the distinctiveness of shape marks,
see: Guidelines for Examination of European Union Trade
Marks, Part B ‘Examination’, Section 4 ‘Absolute Grounds
of Refusal’, Chapter 3 ‘Non-distinctive trade marks’
(Article 7(1)(b) EUTMR) 1 October 2017, 18
New types of marks available after the European Union Trade Mark Reform
2020
389
3
visual elements as part of the appearance of the
product129 may render the shape mark more easily
distinctive.
33
Additionally, during the reform, Art. 7 (1) (e)
EUTMR was modied by inserting “or another
characteristic”
130
to accommodate the removal of
the graphic representation requirement131. Such
prohibition should extend in an analogous way to
any characteristic of a product falling under this
provision, in order to prevent situations where the
said characteristics would serve to confer or extend
an intellectual property right, e.g. design or patent,
for an indenite period of time132.
euipo.europa.eu/tunnel-web/secure/webdav/guest/
document_library/contentPdfs/law_and_practice/
trade_marks_practice_manual/WP_2_2017/Part-B/04-
part_b_examination_section_4_absolute_grounds_for_
refusal/part_B_examination_section_4_chapter_3/
part_B_examination_section_4_chapter_3_Non-
Distinctive_tm_en.pdf> accessed 25 November 2019.
129 EUTMIR, art 3 (3) (c).
130 ibid, art 7 (1) (e): “1. The following shall not be registered (…)
(e) signs which consist exclusively of: (…) (i) the shape, or
another characteristic, which results from the nature of the
goods themselves; (ii) the shape, or another characteristic,
of goods which is necessary to obtain a technical result;
(iii) the shape, or another characteristic, which gives
substantial value to the goods”.
131 Taras Kubalda, ‘EU Trademark Law Reform Series:
Implications for Nontraditional Marks’ [2016]
www.inta.org/INTABulletin/Pages/EU_TM_Reform_7103.
aspx> accessed 7 May 2019 citing Webinar ‘The EU
Trademark Reform: What will it Change for Trademark
Owners and Practitioners?’ (speakers: Dimitris Botis,
Deputy Director for Legal Affairs, International Cooperation
& Legal Affairs Department, Ofce for Harmonization in the
Internal Market (currently, European Union Intellectual
Property Ofce (EUIPO)); Tomas Eichenberg, Policy Ofcer
- Legal Advisor (EU Policy and International), Directorate
General for GROWTH, European Commission; Stephen
Rowan, Director Trade Marks and Designs Division, UK
Intellectual Property Ofce; moderator: Michael Hawkins,
Noerr Alicante IP, S.L. (Spain), Chair of INTA Legislation
& Regulation—Europe and Central Asia Subcommittee).
More information on the webinar:
org/E-Learning/Pages/2015-The-EU-Trademark-Reform-
Webcast.aspx> accessed 7 May 2019.
132 Guidelines for Examination of European Union Trade
Marks, Part B ‘Examination’, Section 4 ‘Absolute Grounds
for Refusal’, Chapter 6 ‘Shapes or Other Characteristics
with an Essentially Technical Function, Substantial Value
or Resulting from the Nature of the Goods’ 1 October 2017,
3 <https://euipo.europa.eu/tunnel-web/secure/webdav/
guest/document_library/contentPdfs/law_and_practice/
II. Color Marks
34 Art. 3 (3) (f) EUTMIR states that where a trade mark
consists exclusively of a single color, it shall be
represented by submitting a reproduction of the
color without contours and shall be accompanied by
a reference to a generally recognized color code133.
If the mark consists exclusively of a combination of
colors without contours, it shall be represented by
submitting a reproduction of the color combination
in a uniform and predetermined manner and the
indication of those colors shall be accompanied by a
reference to the corresponding generally recognized
color codes, giving the option to add a description134.
35
With regard to the color combinations without
contour, the EUTMIR seems to comply with the
Heidelberger Bauchemie judgement, which established
that the representation of a combination of two or
more colors needs to be “systematically arranged by
associating the colors concerned in a predetermined
and uniform way”135. In this light, an application for
a combination of colors arranged in any conceivable
form would not comply with the specicity
requirement, which was analyzed by the CJEU in the
Dyson judgement
136
. This understanding was recently
expressed in the Red Bull joined cases137 regarding the
combination of colors “blue and silver”, in which the
GCEU again referred to the Heidelberger Bauchemie
judgement with regard to the capability of colors
trade_marks_practice_manual/WP_2_2017/Part-B/04-
part_b_examination_section_4_absolute_grounds_for_
refusal/part_B_examination_section_4_chapter_6/
part_B_examination_section_4_chapter_6_Shapes_other_
characteristics_en.pdf > accessed 25 November 2019.
133 EUTMIR, art 3 (3) (f) (i). This complies with Libertel
judgement, where representation requirements of a trade
mark consisting of color per se without a contour were
analyzed (Case C-104/01 Libertel [2003] ECR I-3793, paras 37-
38).
134 ibid, art 3 (3) (f) (ii).
135 Case C-49/02 Heidelberger Bauchemie [2004] ECR I-6129, para
33 (colors blue and yellow).
136 Annette Kur and Martin Senftleben, European Trade Mark
Law (OUP 2017) 101; also see: case C-321/03 Dyson [2007]
I-00687, paras 37-38.
137 Joined cases T-101/15 and T-102/15 Red Bull v EUIPO -
Optimum Mark () and argent) (GC, 30 November 2017), which
are at the present moment under appeal to the CJEU, (case
C-124/18 P Red Bull v EUIPO, Appeal to the CJEU from the
Judgment of the GC of 30 November 2017 in cases T-101/15
and T-102/15).
2020
Inês Ribeiro da Cunha and Jurgita Randakevičiūtė-Alpman
390
3
and combinations of colors of being a sign
138
. The
GCEU conrmed the decision of EUIPO´s Board of
Appeal by nding that the mere indication of the
ratio of the two colors (blue and silver) would allow
for the arrangement of those colors in numerous
different combinations and, therefore, it would
not constitute a systematic arrangement in a
predetermined and uniform way, but would produce
“a very different overall impression and preventing
consumers from repeating with certainty a purchase
experience”
139
. The case is currently under appeal
before the CJEU and although it is not likely that
any practical differences in the registration of EU
trade marks consisting of color combinations at the
EUIPO will occur, it is expected that the CJEU may
provide further clarication to the criteria set in
the Heidelberger Bauchemie judgement with regard
to the manner in which color combinations should
be represented.
36
In the recent Oy Hartwall judgement140, the CJEU
assessed the classication of a sign as a color mark
or as a gurative mark in light of the principle of
clarity and precision. It stated that the indication
of the type of mark “serves to clarify the subject
matter and scope of protection sought under
trade mark law, in that it enables it to be specied
whether the contours are part of the subject matter
of the application for registration”141. The CJEU also
analyzed the effect the classication as a color or
gurative mark might have on the assessment of
distinctive character142. It held that the criteria for
the assessment of the distinctive character of color
marks is the same as for those of other types of marks,
adding that the difculties that may arise from
certain types of marks due to their nature, do not
justify laying down stricter criteria “supplementing
or derogating from application of the criterion of
distinctive character as interpreted by the Court
with regard to other categories of marks”143. In light
138 Case C-49/02 Heidelberger Bauchemie [2004] ECR I-6129,
para 23: “ colours are normally a simple property of
things . Even in the particular eld of trade, colours
and combinations of colours are generally used for their
attractive or decorative powers, and do not convey any
meaning. However, it is possible that colours or combination
of colours may be capable, when used in relation to a
product or service, of being a sign.”
139 Joined cases T-101/15 and T-102/15 Red Bull v EUIPO -
Optimum Mark () and argent) (GC, 30 November 2017), para 89.
140 Case C-578/17 Hartwall (CJEU, 27 March 2019).
141 ibid, para 25.
142 ibid, para 26.
143 ibid, para 28.
of this, the CJEU readdressed the criteria set by the
Libertel judgement144 stating that the perception of
the relevant public is not necessarily the same in
the case of a sign consisting of a color mark as it
would be in the case of a word or gurative mark,
because a color per se is not normally inherently
capable of distinguishing the goods and services
from one undertaking from those of another, but,
nevertheless, it may acquire following the use that
is made of it in the market145.
III. Sound, Motion and
Multimedia Marks
37 According to the Art. 3 (3) (g) EUTMIR, a trade mark
consisting exclusively of a sound or of combination
of sounds, “shall be represented by submitting
an audio le reproducing the sound or by an
accurate representation of the sound in musical
notation”146. Thus, the “graphical representation
of the sound, in particular a musical notation”
147
,
according to the EUTMIR, could be replaced by
an audio le. This means that the applicants for
sound marks will no longer need to submit both the
graphic representation of the mark and a sound le
representing the sound itself in a MP3 format148, as it
used to be before the EU trade mark reform, because
either one of them will be sufcient.
38
An accurate musical notation, in principle, should
be understood under the criteria set in Art. 4 (b)
EUTMR as including “all the elements necessary for
interpreting the melody, that is to say, pitch, tempo,
lyrics (if any), etc.”149. This seems to be in line with
the Shield Mark judgement, in which before the EU
trade mark reform, the CJEU established that the
requirement of the graphic representation of a sound
144 Case C-104/01 Libertel [2003] ECR I-3793, paras 66-67.
145 Case C-578/17 Hartwall (CJEU, 27 March 2019), paras 29-30.
146 EUTMIR, art 3 (3) (g).
147 CTMIR, rule 3.
148 Ralf Sieckmann, ‘Sound Trade and Service Marks’ in Kai
Bronner, Rainer Hirt (eds), Audio Branding. Brands, Sounds and
Communication (Nomos 2009) 193.
149 Guidelines for Examination of European Union Trade
Marks, Part B ‘Examination’, Section 2 ‘Formalities’, Chapter
9 ‘Mark type’ 1 October 2017, 29
tunnel-web/secure/webdav/guest/document_library/
contentPdfs/law_and_practice/trade_marks_practice_
manual/WP_2_2017/Part-B/02-part_b_examination_
section_2_formalities/part_b_examination_section_2_
formalities_en.pdf> accessed 25 November 2019.
New types of marks available after the European Union Trade Mark Reform
2020
391
3
mark is satised, “where the sign is represented
by a stave divided into measures and showing, in
particular, a clef, musical notes and rests whose form
indicates the relative value and, where necessary,
accidentals”150.
39
Motion marks are dened by the Art. 3 (3) (h) EUTMIR
as trade marks “consisting of, or extending to,
a movement or a change in the position of the
elements of the mark”151. This provision brings
novelties to the already existing practice for
registering motion marks by allowing, alternatively
to a series of still sequential images, to submit a video
le showing the movement or change of position as
the representation of such a mark, and also making
the description merely optional152.
40 Lastly, Art. 3 (3) (i) EUTMIR introduces multimedia
marks by dening them as “consisting of, or
extending to, the combination of image and
sound”
153
. In this light, it is a new category in the
sense that it combines sound and motion marks and
has to be led by submitting an audio-visual le
containing the combination of both
154
. Before the
EU trade mark reform, it was not possible to register
trade marks combining sound and motion, which
makes multimedia marks the novelty of the trade
mark catalogue provided in Art. 3 EUTMIR.
IV. Hologram Marks
41 According to Art. 3 (3) (j) EUTMIR, a hologram trade
mark is considered as such by having holographic
characteristics, which should be represented
by “submitting a video le or photographic
representation containing the views which are
necessary to sufciently identify the holographic
effect in its entirety”155. Before the reform,
holographic signs were regarded as “particularly
difcult to graphically represent as a paper
representation does not allow the image to “change”
150 Case C-283/01 Shield Mark [2003] ECR I-14313, para 64.
151 EUTMIR, art. 3 (3) (h).
152 EUTMIR, art 3 (3) (h): “ the [motion] mark shall be
represented by submitting a video le or by a series of
sequential still images showing the movement or change
of position. Where still images are used, they may be
numbered or accompanied by a description explaining the
sequence”.
153 EUTMIR, art 3 (3) (i).
154 ibid.
155 ibid, art 3 (3) (j).
as it would naturally on holographic paper”156 and
could have been registered, when a clear mark
description with all different views of the mark were
submitted to the EUIPO
157
. Taking into consideration
the pre-reform situation, it is possible to conclude
that by the introduction of “a video le” option, the
new legal provisions provide for more opportunities
to register holograms as trade marks at the EUIPO.
V. Olfactory and Taste Marks
42
Differently from the visual signs being processed
in the cortex responsible for thoughts and actions,
smells and tastes are linked to the limbic system,
which is in charge of memories and emotions158. The
latter senses can make a brand more impressionable
to consumers and inuence their purchasing
habits159. Hence, it is important to discuss how
smells (scents) and avors can be registered under
the current EU trade mark law regime.
43
The Advocate General in his Opinion in the
Sieckmann case stated that any message capable
of perception by any senses of consumers could
function as a trade mark160. However, because
avors and scents are directly connected with the
goods and services they referred to, they could
not be perceived in an independent manner in the
way that visual marks can161. In addition, although
156 Guidelines for examination in the Ofce for the
Harmonisation in the Internal Market (Trade marks and
Designs) on Community Trade marks. Part B ‘Examination’.
Section 2. ‘Formalities’, 1 February 2014, 23
europa.eu/tunnel-web/secure/webdav/guest/document_
library/contentPdfs/law_and_practice/decisions_
president/ex13-05_en.pdf> accessed 8 May 2019.
157 ibid.
158 Rich McEarchran, ‘Multisensory branding: Immersing all
ve senses’ (Virgin.com Blog, 2016)
com/entrepreneur/multisensory-branding-immersing-all-
ve-senses> accessed 7 April 2019. Also see: Case C-273/00
Sieckmann [2002] ECR I-11770, Opinion of AG Colomer, para
29.
159 Martin Lindstrom, ‘Broad sensory branding’ [2005] 14 (2)
Journal of Product & Brand Management 84, 85.
160 Case C-273/00 Sieckmann [2002] ECR I-11770, Opinion of AG
Colomer, para 22.
161 ibid, see: footnote 25 of the Opinion of AG Colomer citing
Spyros Maniatis, ‘Scents as Trade Marks: Propertisation of
Scents and Olfactory Poverty’ in L Bently and L Flynn (eds),
Law and the Senses: Sensational Jurisprudence (Pluto Press
1996) 217, 222-223.
2020
Inês Ribeiro da Cunha and Jurgita Randakevičiūtė-Alpman
392
3
the ability of humans to perceive colors is just as
limited as the ability to perceive scents, visual
marks are still regarded as easier to comprehend,
because they relate to the concept of shape and
form, whereas taste and olfactory signs not only
have a narrower range of perception162, but also
lack precise rules for determining their content163.
Another argument as to why it may not be possible
to register the latter type of marks, was that these
types of marks are not capable of being represented
graphically and proposed alternatives also did not
suit this requirement
164
; a sample of a scent is not
durable in time and may alter its content through
the passing of it165, whereas a chemical formula
represents the substance itself and, in the same
way as a description, it is not clear and precise166.
As a result, although the perception of, e.g. smell,
can perform an identication function, at that
time it could not full the graphic representation
requirement167. This Opinion was followed in the
Sieckmann judgement establishing seven criteria168,
which made the registration of the discussed signs at
the existing stage of technology impossible and are
now compiled in the current EU trade mark law169.
44
Despite the fact that there is no mention to olfactory,
taste, or tactile trade marks in the EUTMIR,
Art. 3 (4) states that when a mark is not covered by
any of the types listed, the “representation shall
comply with the standards set out in paragraph
1 [of Art. 3 EUTMIR] and may be accompanied by
a description”170. This claries that theoretically
162 Case C-273/00 Sieckmann [2002] ECR I-11770, Opinion of AG
Colomer, paras 27-28.
163 ibid, para 25.
164 ibid, para 39.
165 ibid, para 42. For further analysis of the opinion, see:
Alexander von Mühlendahl and others, Trade mark law in
Europe (3rd Edition, OUP 2016) 64-68.
166 Case C-273/00 Sieckmann [2002] ECR I-11770, Opinion of AG
Colomer, para 40-42.
167 ibid, para 46.
168 “ a trade mark may consist of a sign which is not
in itself capable of being perceived visually, provided
that it can be represented graphically, particularly by
means of images, lines or characters, and that the
representation is clear, precise, self-contained, easily
accessible, intelligible, durable and objective.” (Case
C-273/00 Sieckmann [2002] ECR I-11770, para 55).
169 EUTMR, Recital 10; EUTMIR, art 3 (1).
170 EUTMIR, art 3 (4) (g).
there is no numerus clausus list of the types of marks
available for registration under the post-reform EU
trade mark law. Nevertheless, Art. 3 (9) EUTMIR
states that “the ling of a sample or a specimen
shall not constitute a proper representation of the
trade mark”
171
, which, under the current available
technology, would be a way of representing scents
and tastes in the Register of EU trade marks.
Currently, this makes the registration of these trade
marks unattainable.
45
In this light, it seems that the aforementioned
situation is unlikely to change in the near future for
smell, taste, or other non-visual marks in the sense
that neither a description nor a sample could comply
with the criteria of clarity and precision set in the
law. However, an issue may arise if the proprietor of
a smell or taste mark validly registered in a Member
State of the Paris Convention172, would claim the
registration of its trade mark as “it is” under the
Art. 6
quinquies
of this international legal act
173
. If the
latter provision would be regarded as applicable at
all, one argument against the registration would be
to consider the criteria of the Sieckmann judgement
set in the EUTMR
174
and EUTMIR
175
, as forming part of
the public order; namely to protect the transparency
of the Register of EU trade marks176 and to comply
with the requirement of legal certainty177. Another
possibility would be that, if said signs would be
regarded as being capable to be represented on
the latter Register, they might not be considered
distinctive enough and, thus, such application would
be rejected178.
46 With regards to everything that has been discussed
above, it is possible to conclude that although the
removal of the graphic representation requirement
and the clearer conditions to register certain trade
171 ibid, art 3 (9).
172 Paris Convention for the Protection of Industrial Property (as
amended on September 28, 1979)
en/text/288514> accessed 22 May 2019.
173 Annette Kur and Martin Senftleben, European Trade Mark
Law (OUP 2017) 98.
174 EUTMR, recital 10.
175 EUTMIR, art 3 (2).
176 Annette Kur and Martin Senftleben, European Trade Mark
Law (OUP 2017) 98.
177 Case C-273/00 Sieckmann [2002] ECR I-11770, Opinion of AG
Colomer, para 36.
178 Annette Kur and Martin Senftleben, European Trade Mark
Law (OUP 2017) 99.
New types of marks available after the European Union Trade Mark Reform
2020
393
3
marks cannot be disputed, it is necessary to admit
that, in practice, the post-reform EU trade mark
system reects the so-called “what you see is what
you get” (WYSIWYG)179 approach. The fact that
the representation of the mark denes the subject
matter of protection of the trade mark, which also
needs to comply with the Sieckmann criteria, seems to
leave little room at the current stage of technological
development to represent on the Register certain
non-visual non-traditional trade marks, such as
smell or taste.
E. The Implications for Non-
Traditional Trade Marks in the EU
47
The U.S. and the post-reform EU trade mark legal
provisions regarding the types of signs available
for protection are rather similar. The fact that both
legal regimes provide for a rather vast variety of
trade marks is clear from § 1127 of the Trademark
Act
180
and its interpretation
181
, as well as from the
Art. 3 (4) EUTMIR, which offers a non-exhaustive
list of the types of marks available for registration
182
.
This demonstrates the willingness of these two legal
systems to accept the widest variety of trade marks as
possible. Taking into consideration the technological
progress providing new methods for representation
of marks183 and marketing techniques184, this should
not be regarded as unexpected.
48
However, despite the increased openness of EU
trade mark law185, from a practical point of view,
179 EU Trade Mark Reform. Summary of Changes Applying from
1 October 2017
secure/webdav/guest/document_library/contentPdfs/
law_and_practice/eutm_regulation/Summary_LR2_en.pd>
accessed 8 May 2019.
180 Trademark Act of 1946, 15 U.S.C. § 1127 (2019).
181 E.g.: Qualitex Co. v. Jacobson Products Co. 514 U.S. 159
(1995); Kenneth L Port, Trademark Law and Policy (Carolina
Academic Press 2018) 51.
182 EUTMIR, art 3 (4).
183 E.g.: Dev S Gangjee, ‘Paying the Price for Admission’ in Irene
Calboli and Martin Senftleben (eds), The Protection of Non-
Traditional Trademarks. Critical Perspectives (OUP 2018) 61-62.
184 E.g.: Deven Desai, ‘Should Trademark Law Protect Non-
Traditional Trademarks? A Look at How Marketing
Practices Try to Catch Essences’ in Irene Calboli and Martin
Senftleben (eds), The Protection of Non-Traditional Trademarks.
Critical Perspectives (OUP 2018) 126-129.
185 Annette Kur, ‘The EU Trademark Reform Package – (Too)
certain limitations with regard to the registration
of trade marks not indicated in the Art. 3 (3) (a)-(j)
EUTMIR, that are mainly non-visual (e.g., olfactory,
taste and tactile), remain. This is conditioned by
the fact that, notwithstanding the abolishment of
the graphic representation requirement, which
was regarded as “crucial to the sound operation of
the system”186, trade marks must still be capable of
being represented on the Register in a sufciently
clear and precise manner187; namely, by using
generally available technology
188
and meeting the
seven criteria established by the CJEU189, which are
now incorporated into the EUTMIR190. Additionally,
according to Art. 3 (2) EUTMIR, a description,
which, at the moment, is a technologically feasible
alternative for representation of non-visual marks,
can be used solely for explanatory reasons, but not for
representing a mark191. Therefore, if a sign consists
only of non-visual matter, under the amended EU
legal provisions, a description cannot constitute a
sufcient representation of any trade mark.
49
Taking into consideration the currently available
technological possibilities to represent trade marks,
it is clear that the new requirements established
by EU trade mark law allows for registration of
signs that: (i) are visual (word, gurative, shape,
pattern, position, color, hologram or motion
Bold a Step Ahead or Back to Status Quo?’ [2015] vol. 19
Marquette Intellectual Property Review 19, 26.
186 Annette Kur and Martin Senftleben, European Trade Mark
Law (OUP 2017) 96. “ the function of that requirement
was, in particular, ‘to dene the mark itself in order to
determine the precise subject of the protection afforded by
the registered mark to its proprietor’.” (Annette Kur and
Martin Senftleben, European Trade Mark Law (OUP 2017) 97
citing (Case C-273/00 Sieckmann [2002] ECR I-11770, para 48).
187 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.
188 EUTMR, recital 10; EUTMIR, art 3 (1).
189 “ a trade mark may consist of a sign which is not in
itself capable of being perceived visually, provided that it
can be represented graphically, particularly by means of
images, lines or characters, and that the representation is
clear, precise, self-contained, easily accessible, intelligible,
durable and objective” (Case C-273/00 Sieckmann [2002] ECR
I-11770, para 55).
190 EUTMIR, art 3 (1).
191 ibid, art 3 (2). Also EUTMIR, art 3 (4): “Where the trade mark
is not covered by any of the types listed in paragraph 3, its
representation shall comply with the standards set out in
paragraph 1 and may be accompanied by a description”
2020
Inês Ribeiro da Cunha and Jurgita Randakevičiūtė-Alpman
394
3
marks); (ii) constitute a sound; or (iii) consists of
the combination of visual and sound elements
(multimedia marks), whereas the registration
of smell, taste or tactile marks, under the new
EU regulatory framework, due to the technical
difculties to represent them on the Register, so
far, remains impossible. This means that after the
reform, in practice, there is still a narrower list of
types of signs available for trade mark registration
in the EU than in the U.S.
50 However, the above-discussed requirements for the
representation of marks in the Register192 limiting
the possibility to obtain protection for smell, sound
and tactile signs are meant to perform an important
task, i.e. “to enable the competent authorities and
the public to determine with clarity and precision
the subject-matter of the protection afforded to its
proprietor”
193
. Thus, this is not merely a technical
requirement, but it also allows one to achieve the
objective of clarity and precision of trade mark
registrations194. Fullling this requirement of
representation is crucial to EU trade mark law,
because it ensures that the scope and nature of
each mark is clearly dened in the Register and
comprehensible, so that its holder, consumers
and competitors can readily ascertain the scope
of the protection, and the authorities would be
able to properly examine, publish, and eventually
protect the mark from unlawful use by others195.
Therefore, regardless of the needs that may arise
from sensory branding strategies196, in order to
ensure legal certainty and secure the interests of
the stakeholders, it should not come as a surprise
that the EU trade mark law was not amended in
a way to include a description as an appropriate
form of representation, and, consequently, making
smells, tastes or tactile signs available for trade mark
registration.
192 (i) To be capable of being represented on the Register by
using generally available technology and (ii) to conform
seven criteria established by the CJEU and currently
incorporated into art 3 (1) of the EUTMIR.
193 EUTMIR, art 3 (1).
194 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.
195 Melissa E Roth, ‘Something Old, Something New,
Something Borrowed, Something Blue: A New Tradition in
Nontraditional Trademark Registrations’ [2005] 1 Cardozo
Law Review 457, 467.
196 E.g.: Bertil Hultén, ‘Branding by the ve senses: A sensory
branding framework’ [2017] 6 (3) 1-12 Autumn/Fall Journal
of Brand Strategy 1.
51 Such a cautious approach is also closely connected
to the duration of trade mark protection. After
meeting formal and substantive requirements for
registration
197
, an applicant obtains an intellectual
property right, which is relatively inexpensive and,
taking into consideration the possibility to renew
it every ten years, can even become perpetual198. It
is argued that such unlimitedly renewable term of
exclusive rights together with signicantly more
exible application of requirements for obtaining
trade mark protection199 for product shapes, patterns,
colors, videos etc., poses the risk of creating negative
effects on the market competition200, literary or
cultural creativity201, innovation in product design,
and quality202. Bearing in mind these concerns, at the
moment mostly raised by visually perceptible non-
traditional marks, the reluctance of the EU legislator
to take a step further by making the standards of
representation even more exible (e.g. introducing
a description as a possible means of representation
of a mark on the Register), and, as a result, not
providing for actual possibilities to register certain
non-visual signs203 as trade marks, can be regarded
as appropriate.
197 EUTMIR, art 4.
198 EUTMR, art 52 and 53; Trademark Act of 1946, 15 U.S.C. §
1058 (a) (2019).
199 Irene Calboli and Martin Senftleben, ‘Introduction’ in Irene
Calboli and Martin Senftleben (eds), The Protection of Non-
Traditional Trademarks. Critical Perspectives (OUP 2018) 1.
200 Glynn S Lunney, Jr., ‘Non-Traditional Trademarks. The
Error Costs of Making an Exception the Rule’ in Irene
Calboli and Martin Senftleben (eds), The Protection of Non-
Traditional Trademarks. Critical Perspectives (OUP 2018) 231;
Irene Calboli, ‘Hands Off “My” Colors, Patterns, and Shapes!
How Non-Traditional Trademarks Promote Standardization
and May Negatively Impact Creativity and Innovation’ in
Irene Calboli and Martin Senftleben (eds), The Protection of
Non-Traditional Trademarks. Critical Perspectives (OUP 2018)
305.
201 Martin Senftleben, ‘A Clash of Culture and Commerce. Non-
Traditional Marks and the Impediment of Cyclic Cultural
Innovation’ in Irene Calboli and Martin Senftleben (eds), The
Protection of Non-Traditional Trademarks. Critical Perspectives
(OUP 2018) 312, 332.
202 Irene Calboli, ‘Hands Off “My” Colors, Patterns, and Shapes!
How Non-Traditional Trademarks Promote Standardization
and May Negatively Impact Creativity and Innovation’ in
Irene Calboli and Martin Senftleben (eds), The Protection of
Non-Traditional Trademarks. Critical Perspectives (OUP 2018)
306-307.
203 Smells, tastes and tactile signs.
New types of marks available after the European Union Trade Mark Reform
2020
395
3
52
As it was indicated before, the current level of
technological development is not sufcient for
scents, avors and tactile signs to be represented on
the Register in conformity with Art. 3 (1) EUTMIR204.
Additionally, allowing to le a description, which also
does not suit all the aforementioned requirements,
could potentially grant an unclear scope of exclusive
rights to one undertaking throughout the EU
territory leading to certain issues. Firstly, problems
could already emerge during the early stage of
registration, when an applicant is performing a
trade mark search. Third parties by relying only on
a description of an earlier non-visual mark might
face the risk of ling an application for an identical
or similar trade mark, which will later be opposed
and rejected205. In the stage of registration of a mark,
an assessment based only on the description led,
might not allow the relevant authorities to be able to
properly dene the scope of protection of the marks
at dispute, compare them, and resolve the conicts
properly. Secondly, further issues with respect to
the unclear scope of the trade mark protection
may arise in infringement proceedings
206
. In such
situations, not only the interested parties, but also
dispute resolution bodies, are likely to encounter
difculties while dealing with infringement cases
involving olfactory, taste and tactile marks.
53
One may argue that the post-reform EU legal
framework, in comparison to U.S. trade mark law,
might not provide businesses with the opportunity
to employ their full marketing capacity and, this
way, realize their economic potential. However, in
this context, it is questionable whether the non-
visually perceptible non-traditional trade marks are
so signicant that it would encourage reconsidering
the aforementioned EU legal requirements for trade
mark representation. By allowing to le a description
for non-visual trade marks, US law in comparison
to EU law, demonstrates a more exible approach
with regard to the registration of these types of
marks. However, according to the publicly available
statistics provided by the USPTO, out of 6,707,708
applications led with or registrations issued by
the USPTO between 1 January 1870 and 6 January
2012, only 477 applications concern sound, smell
and other non-visual trade marks207. This and other
204 EUTMIR, art 3 (1).
205 For more details see: EUTMR, art 8 (1).
206 ibid, art 9. The protection provided by EU trade mark law
can be particularly broad, when the allegedly infringed
trade mark “has a reputation” in the EU (EUTMR, art 9 (2)
(c)).
207 Stuart J H Graham and others, ‘The USPTO Trademark Case
Files Dataset: Descriptions, Lessons, and Insights’ [2013]
Journal of Economics & Management Strategy 31, 44-46.
studies208 demonstrating a small share of non-visual
trade marks out of all the applications at the USPTO,
allow one to assume that these types of marks still
have a rather low signicance for businesses.
54
According to the publicly available statistics of
the EUIPO, the total number of EU trade mark
applications led between 1 January 2017 and 31
December 2017 was 146,457209, 24 of which were
non-visual trade marks210, comprising approximately
0,02 percent of all the aforementioned trade mark
applications in that period of time211. Meanwhile in
the U.S., the number of applications for non-visual
208 E.g.: Carolina Castaldi, ‘The Economic Management of Non-
Traditional Trademarks. Why, How Much, What and Who’
in Irene Calboli and Martin Senftleben (eds) The Protection
of Non-Traditional Trademarks: Critical Perspectives (OUP 2019)
257.
209 EUIPO Statistics of European Union Trade Marks, 1996-01 to
2019-10 Evolution <https://euipo.europa.eu/tunnel-web/
secure/webdav/guest/document_library/contentPdfs/
about_euipo/the_ofce/statistics-of-european-union-
trade-marks_en.pdf> accessed 25 November 2019 (only the
period of 1 January 2017-31 December 2017 was taken into
account).
210 24 applications for ‘sound’ trade marks were led at the
EUIPO from 1 January 2017 until 31 December 2017 (EUIPO
Statistics of European Union Trade Marks, 1996-01 to
2019-10 Evolution, <https://euipo.europa.eu/tunnel-web/
secure/webdav/guest/document_library/contentPdfs/
about_euipo/the_ofce/statistics-of-european-union-
trade-marks_en.pdf> accessed 25 November 2019).
According to the EUIPO trade mark guidelines, the ‘other’
marks are those that are not covered by the art 3(3)
EUTMIR and may include not only non-visual, i.e. smell
(olfactory) marks, taste marks and tactile marks, but also
tracer marks, which are visual (Guidelines for Examination
of European Union Trade Marks, Part B ‘Examination’,
Section 2 ‘Formalities’, Chapter 9 ‘Mark type’ 1 October
2017, 32-33
webdav/guest/document_library/contentPdfs/law_and_
practice/trade_marks_practice_manual/WP_2_2017/Part-
B/02-part_b_examination_section_2_formalities/part_b_
examination_section_2_formalities_en.pdf> accessed 25
November 2019). However, according to the information of
the TMview database, none of the applications for ‘other’
trade marks led at the EUIPO from 1 January 2017 until 31
December 2017 included non-visual trade marks
www.tmdn.org/tmview/welcome> accessed 26 November
2019.
211 EUIPO Statistics of European Union Trade Marks, 1996-01 to
2019-10 Evolution <https://euipo.europa.eu/tunnel-web/
secure/webdav/guest/document_library/contentPdfs/
about_euipo/the_ofce/statistics-of-european-union-
trade-marks_en.pdf> accessed 25 November 2019.
2020
Inês Ribeiro da Cunha and Jurgita Randakevičiūtė-Alpman
396
3
trade marks during the same period of time212 was
only 48 out of the total of 451,242, comprising
0,011 percent of the total number of trade mark
applications led at the USPTO213. Thus, despite
the more exible formal requirements under U.S.
law for trade mark registration and the possibility
to obtain protection for a broader variety of non-
traditional marks that are non-visual, these types of
trade marks in the EU constitute a higher proportion
from all the applications led during the same period
of time. Thus, the number of such marks does not
only depend on the requirements for registration -
in particular the representation - but also on other
factors, such as their economic signicance to the
trade mark owners.
55
With regard to all the issues discussed above, the
EU trade mark reform has certainly brought about
changes to the registration of certain types of visual
non-traditional trade marks. The permission to
submit a sound le instead of a musical notation
214
or
a video le, alternatively to a series of still sequential
images, showing the movement, suits the nature of
sound and motion signs accordingly, and also fulls
212 1 January 2017-31 December 2017.
213 Trademark Case File Dataset, 2018
gov/learning-and-resources/electronic-data-products/
trademark-case-les-dataset-0> accessed 4 August 2019.
48 applications for non-visual trade marks constitute
approximately 0,0106 ≈ 0,011 percent of the number of trade
mark applications led at the USPTO (451,242) between
1 January 2017 until 31 December 2017. According to
information from the USPTO, serial numbers without a ling
date were excluded from the 2018 update of the Trademark
Case File Dataset. However, according to the prior version,
i.e. Trademark Case File Dataset as of 2017, there were 59
observations of trade marks having the drawing code
“6000” used for non-visual trade marks. Nevertheless,
as the Trademark Status & Document Retrieval (TSDR)
reveals, 10 of those trade marks that have the drawing code
“6000” (serial No. 76611478; serial No. 77053384; serial No.
77803694; serial No. 78171354; serial No. 78769423; serial No.
86142261; serial No. 86142303; serial No. 86213691; serial
No. 86306920; serial No. 87180991), whose ling date is not
indicated in the Trademark Case File Dataset as of 2017,
were not led between 1 January 2017 until 31 December
2017 (Trademark Status & Document Retrieval (TSDR)
one of them (serial No. 87313375), during the prosecution,
was changed from mark drawing code “6000” to code
“2000” (“AN ILLUSTRATION DRAWING WITHOUT ANY
WORDS(S)/ LETTER(S)”) (Trademark Status & Document
Retrieval (TSDR). Document “TRAM Snapshot of App at Pub
for Oppostn”
2019).
214 EUTMIR, art 3 (3) (g).
the objective of clarity and precision
215
and, this way,
provides for wider opportunities to obtain trade
mark protection for sounds and movements as such.
Additionally, the possibility to submit an audio-
visual le containing the combination of image and
sound allows registering multimedia trade marks.
However, with regard to the non-traditional marks
that are non-visual, due to the current requirements
for the representation of trade marks on the Register
and currently available technological possibilities
thereof, the post-reform EU trade mark law will not
signicantly affect their registration, and obtaining
protection for them will remain impossible.
Nevertheless, taking into consideration ongoing
technological developments216 that may allow the
representation of more types of trade marks in
accordance to the new provisions in the future, it
remains possible that under the current EU legal
framework we might witness their registration. **
215 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.
216 E.g.: Adam K Raymond, ‘THE INTERNET OF SMELLS: Startups
Race To Cash In On The Latest Fad’ (2014)
businessinsider.com/internet-smells-ophone-startups-
2014-3?IR=T> accessed 12 April 2019; Kota Shiba and others,
‘Data-driven nanomechanical sensing: specic information
extraction from a complex system’ (2017) Scientic Report
accessed 7 April 2019; Adrian Bridgwater, ‘Internet of Smells,
olfaction via nanomechanical sensors’ (2016)
internetofbusiness.com/internet-smells-olfaction-via-
nanomechanical-sensors/> accessed 7 April 2019.
** The views and opinions set out in this article are strictly
personal and should not be attributed to the EUIPO or
Max Planck Institute for Innovation and Competition. I.
Ribeiro da Cunha contributed more to the chapter “D. The
Removal of the Graphic Representation Requirement in the
EU Law” and J. Randakevičiūtė-Alpman contributed more
to the chapter “C. The Non-Traditional Trade Marks under
U.S. Law”, whereas all the other parts of this article were
written jointly by both authors. The authors are grateful to
Kenneth D. Crews, J.D., Ph.D. (Gipson Hoffman & Pancione);
Prof. Marshall Leaffer (Indiana University Bloomington
Maurer School of Law); Dimitris Botis, Deputy Director
for Legal Affairs; to Dominik Hanf, Litigation Service -
International Cooperation & Legal Affairs Department
(EUIPO) and the anonymous peer-reviewer for their helpful
comments; James Forman (Ofce of the Chief Economist of
United States Patent and Trademark Ofce) for answering
questions with regard to the Trademark Case Files Dataset,
as well as to Kemal Tunç Alpman and Justina Randakevičiūtė
for the technical support provided. All remaining errors
belong to the authors.
New types of marks available after the European Union Trade Mark Reform
2020
397
3
F. Conclusion
56
The abolishment of the graphic representation
requirement should be regarded as a signicant
development in EU trade mark law, rendering
this legal system moref adaptable to further
technological development and new marketing
strategies. Nevertheless, as the analysis of the formal
requirements for the representation of registrable
signs shows, even after the EU trade mark reform
there will still be a narrower circle of types of trade
marks available under EU law in comparison to U.S.
law. Due to the fact that the EUTMIR in the light of
the EUTMR criteria does not accept a description
or a specimen as an appropriate representation,
certain non-visual non-traditional signs - taking into
consideration the currently available technologies
for their representation on the Register - remain
unavailable for registration at the EUIPO. The
latter situation under EU trade mark law should
be regarded as being in line with the objective of
clarity and precision, which ensures that the scope
and nature of the mark is clearly dened on the
Register and comprehensible, so that its holder
and third parties are able to determine the scope
of the protection, and the authorities are able to
properly examine, publish, and eventually protect
the mark from unfair use by competitors. However,
rapid technological development may provide for
more possibilities to create a representation of
non-traditional trade marks, which would suit the
requirements established by EU law, making the
registration of the latter types of signs possible
without any need to amend the current provisions
of the EU trade mark law.
To continue reading
Request your trial