Today’s first panel at the Annual Conference looked at the post-graphical representation of non-traditional marks, following the abolition of the graphical representation requirement last year and the introduction of the new Implementing Regulation.

Session chair Roland Mallinson of Taylor Wessing introduced 16 examples of multimedia, motion, position, 3D shape and sound marks that had been applied for at EUIPO since October last year. Some of these have been registered but others are still pending. He also pointed out that about 7,300 cases focused on the graphical representation requirements between 1996 and 2017, when it was abolished.

Dimitris Botis, Deputy Director of the International Cooperation and Legal Affairs Department, EUIPO, summarised the new Implementing Regulation. Some marks can now be filed in an easier and more accurate way by using electronic means, said Dimitris, but the popularity of different types of mark varies: since 1 October 2017, there has been just one hologram mark but 421 shape marks filed.

Dimitris provided guidance on representation, description and disclaimer for the different categories of marks, and discussed some specific cases. For example, sounds must be reasonably identifiable, notable and memorable: the sound of someone saying the word “Barca” was registered, but the sound of a dog barking (for pet food) is still under examination.

Dimitris concluded by saying that the reaction of courts to these new types of marks can only be guessed at. In the meantime, EUIPO is working with national offices to try to give a uniform effect to the Directive. National states have to implement the Directive by January next year.

On this point, Irene Marugan of the European Cooperation Service, EUIPO provided further details on Convergence Project 11 “New types of marks: examination of formal requirements and grounds for refusal”. She explained how the Project would be developed, including the involvement of user representatives such as MARQUES.

Based on a straw poll of staff in 25 offices, certain trends are already clear: for example, the sound of the dog barking for pet food would likely be rejected by all offices (although for different reasons), but a robot voice saying “Gerivan” for clothing would likely be accepted. For motion marks, there was a split between offices over a bike riding in a city for insurance services, as there was over hands clapping for remote controls and also for the multimedia mark of a footballer kicking a ball for sports clothing. “There is a level of divergence in the answers received,” said Irene, adding that there was further divergence when it comes to relative grounds. “There is a lot of work to do and it will be a real challenge to come to an agreement.”

Giving a practitioner’s perspective, Kasper Frahm of Plesner raised some questions about the 16 marks under discussion, such as: Is 16 seconds too long to work to function as a trade mark? Is it possible to identify what is distinctive? If marks are registered, how wide will the scope of protection be? What role does the description play? Could there be a “substantial value” objection? There are a lot of sound mark applications at the moment, he added, many of which have already been registered.

Red Horowitz of BakerHostetler provided a US view, focusing on the definition of trade mark, the considerations applied to non-traditional marks and examples of those that have been registered as sounds, scents, flavours, motions, holograms, lights, textures, colours, colour combinations and trade dress.

He also set out the USPTO’s requirements for representing these marks. Single colours and trade dress cannot be inherently distinctive, so evidence of acquired distinctiveness must be provided for such marks.