EU Regulation no. 2015/2424, entered into force on March 23, 2016, introduced a number of changes to the European trademark regime.
Among them, the amended regulation provides for the abolition of the graphic representation requirement. This implies that, as of October 1, 2017, signs may be represented in any suitable form, using the available technology, provided that the representation is clear, precise, autonomous, easily accessible, intelligible, durable and objective.
Such requirements are, however, in line with the criteria already established in the past by the European Court of Justice with the Sieckmann judgment (C-273/00).
The abolition of the graphic representation requirement is aimed at providing greater flexibility and enabling the registration of other types of trademarks (that may not only be denominative or figurative) possible in the future, thanks to technological advances.
The date of October 1, 2017 (almost two years after the new Regulation was enforced) is motivated by the need of EUIPO and the National Offices to have sufficient time to update their digital organization.
Graphic representation (whose necessity was obviously due to an optimal and practical consultation of the Registers) has always represented an obstacle to the registration of unconventional trademarks (sounds, odors, colors, touch, movement). So much so that in 2015, 99% of the registered European trademarks were traditional trademarks: denominative or figurative. Only in rare cases, despite the graphic representation requirement, some trademarks (sounds, colors) have been admitted to the registration.
Another type of unconventional trademark that should benefit from the abolition of the graphic requirement is the movement trademark.
The applications for this type of trademark should include a determined number of images (no limits are set) that show the movement in question, accompanied by a detailed description of the type of motion, which is consistent with the representation of the sign.
On the basis of decision R443/2010-2 of 23/9/2010 (Red Liquid Flowing in sequence of stills), EUIPO admitted the registration of movement trademarks by adopting as a criterion an audience having a reasonable level of observation and in possession of normal levels of perception and intelligence, which, by consulting the Trademark Register, is able to comprehend movement without requiring a high level of intellectual energy and imagination.
In the meanwhile…
The Danish company Nuevolution A/S applied for a motion trademark on December 3, 2015 providing a description which was rejected on the following grounds:
The graphic depiction of the trade mark was not sufficiently clear, since it was not possible to grasp the movement from the sequence of images shown. Although the description of the trade mark gave an indication of the movement, it was not possible to see this movement from the graphic depiction, as the contrasts from image to image were not sharp enough and the design therefore looked the same on each image.
The images did not show a clear and unambiguous sequence of movement, but rather 15 isolated images of the same design, which were not clearly connected to one another. In this sense it was not clear how the movement progressed and how one image lead to the next.
Despite the claims of the Applicant, the refusal was maintained.
With the appeal, filed in December 2016, the Applicant submitted a modified version of the sign, which was not accepted on the grounds that the trademark is evaluated as it is submitted at the time of filing.
Recently, the appeal was rejected for the following conclusion:
For the sake of completeness, the Board points out that, as from 1 October 2017, when the new EUTMIR as well as the substantial amendments to Article 4 EUTMR will enter into force, the applicant may consider filing a new trade mark application containing an electronic file of the movement mark.
What is left to do is, come October, to pay close attention to the application of new technological means hoping for a more flexible interpretation of the Sieckmann criteria that govern the delegated and executive regulations contained in the recent Regulation.