March 4, 2018
The new European Trade Mark Directive, due to be introduced into UK law by January 14, 2019, will mean that UK trade marks no longer need to be ‘represented graphically’ on the register. This change will mean that, as long as the representation of a sign is sufficiently ‘clear and precise’ (so that other people can tell what protection the mark owner has), different kinds of trade marks will now be allowed on the register – including motion marks, film or ‘multimedia’ marks and hologram marks.
These will complement more traditional trade marks which, historically, have mainly consisted of words (including personal names), letters and numerals, and therefore often comprise company, trading or product names, along with brands and logos. An example: the first registered UK trade mark, which dates from 1876 and is still in force, is a black and white representation of the logo for Bass & Co. Pale Ale (currently belonging to Pioneer Brewing Company).
The industry appetite for more unusual marks has seen an increase in design, colour and sound mark applications, as well as applications for marks covering the shape of goods or packaging of goods. This change to UK law should also make these applications easier. For example, uploading a sound recording, rather than providing musical
notation or other visual depiction, may satisfy the ‘clear and precise’ requirement.
Potential applicants should bear in mind that some businesses have suffered difficulties securing registration, for reasons including failing to be sufficiently precise and clear, falling foul of the exceptions to protection, or else not being considered ‘trade marks’. For example:
· Red Bull’s application for its silver-and-blue combination was rejected, because the representation allowed the two colours to be arranged in different combinations. As the trade mark could take multiple forms, it was considered insufficiently precise.
· Nestlé was denied its three-dimensional shape trade mark representing its famous four-finger KitKat chocolate bar because the Court of Appeal held it had not acquired ‘distinctive character’ such that it could be considered a ‘trade mark’ (as something that denotes origin).
The courts’ and trade mark registries’ treatment of non-traditional trade marks should not deter potential applicants, but simply serve as useful guidance that they must give due care and consideration to the mark’s illustration, and to the evidence they may need to defend any potential objections or exceptions.
Potential applicants can hope that the introduction of more non-traditional trade marks signifies that the courts and registries must be ready to embrace change. Previous case law has suggested (repeatedly) that consumers are more likely to rely on words and logos to identify a product’s origin or manufacturer (the key purpose of a trade mark), rather than shapes or any other indicator. However, if the law makers have decided all such signs are capable of being trade marks, potential applicants for non-traditional marks should not be put at a disadvantage or higher burden of proving their sign qualifies as a ‘trade mark’. Perhaps an increase in non-traditional registrations will support the development – in case law – of a more sophisticated consumer who might rely on other types of trade marks.
Hopefully these changes will allow businesses to build their trade mark portfolio, allowing for layers of protection and, as technology advances, the industry fully expects to grapple with smell, taste and maybe even touch marks.