When someone asks you to think of a trade mark, what comes to mind? The logo you see splashed on the side of your drinks can, the name of that search engine you use to find the latest deals, or the sign on the front door of your favourite restaurant?
Word marks and figurative marks are still by far the most popular categories for EU Trade Mark filings. In 2016, over 120,000 EU Trade Mark applications were filed at the EU Intellectual Property Office. Of these applications, 51% were for word marks and 48% were for figurative marks. The remaining 1% of applications were made up of 479 applications for shape marks, 36 for sound and colour marks, and 112 for marks defined somewhat vaguely as “other” marks. (Information found through searches of the EUIPO online register for the various categories of marks filed during 2016.)
Trade marks are defined in Section 1(1) of the UK Trade Marks Act 1994 as “any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings”. As long as a sign can be visually displayed on the register and is able to indicate the origin of the goods or services to which it is applied, it may be registrable as a trade mark. EU law has similar provisions though these are currently going through a period of change following recent amendments. In particular, the requirement for graphical representation of marks is being removed which in theory makes it easier to protect some unconventional types of marks (tastes, smells, sounds etc).
While word and figurative marks still dominate both the UK and the EU registers, there has been an increase in the number of applications being filed for marks which fall within the “other” category. Included within this category are positional marks – trade marks which are defined not only by the appearance of the mark itself but also its position on the product to which it is applied.
A small but increasing number of applicants are seeking to protect their branding by applying to register positional trade marks. Examples of positional marks applied for in 2016 include a mark consisting of a logo and its positioning on the ankle portion of a sock (EU Trade Mark Registration No. 015226566), a mark consisting of artificial turf as applied to the exterior surfaces of an automobile body (EU Trade Mark Registration No. 015614779), and a mark consisting of decorative items affixed to the back of an item of clothing (EU Trade Mark Registration No. 015191372).
The increase in the number of positional marks being applied for may represent an interesting development in how protection is being sought for these elements of branding. Traditionally, protecting the appearance of products or elements of them has been the task of the UK and Community Design systems (both registered and unregistered). It seems, however, that themes which have grown up in design protection (such as the use of dotted lines and shading to claim protection for only the mark but to give it some context) are now increasingly creeping into the trade mark arena. It will be interesting to see how examiners and judges will view this new breed of trade mark. Will they import the assessment criteria which are presently applied to designs into interpretation of the scope of the trade mark rights, or will a fresh new approach be adopted? Does this add complexity that runs contrary to the push towards making the trade mark register clear, precise and easy for all who are viewing it to understand the protection that is sought?
What does seem certain is that unconventional marks are here to stay; be it in the form of the shape of a drinks bottle, the position of a label, or one of the handful of hologram marks which have made their way onto the EU Trade Mark Register. Trade marks have long since ceased to be simply the name of a product or the logo on a company’s letterhead. Methods of branding have changed and, in turn, so too have the contents of the trade mark registers. The figures suggest that unconventional marks still have a long way to go if they are to account for a significant proportion of the EU applications being filed each year but we are looking forward to seeing whether there will be an uptake in EU filings for these marks when the new EU law comes into effect in September 2017.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.