By: 6 October 2017
European trade mark reforms: More opportunities, or more problems?

Bond Dickinson‘s Rose Smalley and Amy Galloway look at the implications of European trade mark reforms, which will apply from 1 October

It has been claimed that further European trade mark reforms, which apply from 1 October, will present greater opportunities to businesses seeking to register non-traditional trade marks at the European Intellectual Property Office.

But there is some doubt as to whether the registration process will be as straightforward as it is for other traditional marks, and whether or not enforcement will be practical in view of the seemingly narrow scope of protection that is being granted.

The registration of non-traditional categories of marks such as sound, multimedia, motion, hologram and position marks has now been expressly facilitated by the decision to abolish the requirement for “graphical representation” and instead to replace it with a requirement that the mark’s representation must simply be clear, precise, self-contained, easily accessible, intelligible, durable and objective”.

However, lessons learned from the attempted registration of (arguably) more traditional marks (those which have been included in legislation for a longer period); including shapes and colours, suggest that registration may not be quite as easy as anticipated. Experience shows that applicants for items such as shapes or colours have faced difficulties in demonstrating that these signs are capable of fulfilling the essential function of a trade mark, i.e. being a badge of origin, or that they have the necessary distinctiveness.

For example, the recent failed attempt by Nestlé to register a four finger bar for certain confectionary goods – known commonly as the KIT KAT case – as a shape trade mark demonstrates the issues with which applicants contend with when trying to demonstrate that these non-traditional marks deserve registration. Such applications face a high evidential burden to demonstrate their acquired distinctiveness.

While some have succeeded in their shape mark applications, such as Kraft Foods for its Toblerone packaging shape and Lego A/S for the shape of its figurines, other applicants continue to struggle in registering non-traditional marks such as Red Bull for its blue-silver colour combination mark, which was rejected due to a lack of sufficient precision.

Even if marks proceed to registration, there seem to exist significant limitations in terms of enforcing these registrations. While the usual advice is that registration is king, some trade marks are granted with such a narrowly drawn specification or scope that enforcement against “identical” or “similar” marks presents a whole raft of difficulties in determining what these terms mean. Established tests as to what constitutes infringement rely on aural, visual and conceptual similarity – criteria which cannot be applied to a number of these non-traditional marks.

While new opportunities are presented by these reforms, businesses must carefully consider the value of these non-traditional marks in enforcement strategies.

Rose Smalley is a solicitor and Amy Galloway is a registered trade mark attorney at Bond Dickinson

Rose Smalley

Amy Galloway