On New Types of Trademarks -- EU Common Practice CP11 recently published

On New Types of Trademarks  --  EU Common Practice CP11 recently published

Recently, in April 2021, the Intellectual Property Offices of the EU Intellectual Property Network (EUIPN) published a new Common Practice (CP11). It aims at providing guidance regarding the examination of formal requirements and grounds for refusal and/or invalidity of new types of trademarks like sound, motion, multimedia and hologram marks. By publishing this new Common Practice, it is hoped to increase transparency, predictability and legal certainty for both, examiners and users alike.

(For further information on the network see: https://www.tmdn.org/)

CP11 contains quite a bit of information on questions of registrability and invalidation of new types of trademarks and we strongly recommend that you read the Common Practice carefully to get a complete picture. You can find the document with references to instructive examples in different languages at the following link: https://www.tmdn.org/network/converging-practices.

For the purposes of this blog article, we would like to point out some issues regarding the inherent distinctiveness of non-traditional trademarks that we hope you will find relevant for your trademark applications and application strategies:

• When a priority claim involves two trademarks with different subject matter, regardless of their format or the type of trade mark selected, the trademarks will be considered different and consequently, the priority claim will be rejected  --  for instance a multimedia mark consisting of a combination of visual and audio elements and a younger sound mark claiming the priority of the earlier multimedia mark.
• Priority claims in which one of the filings is represented in musical notation (for instance as a JPEG) and the other is represented in an audio file (for instance as a MP3), will only be accepted if all the elements contained in the audio file are indicated in the musical notation.
• Priority claims in which one of the filings is represented in a sequence of still images (for instance as a JPEG) and the other in a video file (for instance as a MP4) will only be accepted if all the elements of the video file and their complete movement are clearly identifiable in the sequence of still images. If the second filing is represented in a sequence of still images, a description can be required to ensure that the subject matter is identical (e.g. duration, speed, repetitions).
• Sounds are increasingly being used in trade as part of a branding strategy and consumers are more likely to perceive them as indications of commercial origin. Thus, for the sake of analysis of consumer perception, sound marks can be grouped in at least the following ways:

1) sounds produced by or connected to the goods or services;

2) notes, combination of notes, tunes or melodies;

3) sounds which are the audible equivalent of verbal elements;

4) sounds which are not included in the previous groups.

• When the sound perceived in a sound mark contains a sound disassociated from the goods and/or services applied for, it will, in principle, be considered distinctive as long as it is capable of being recognized by the consumer as an indication of commercial origin.
• When a sound mark consists of non-distinctive/descriptive/generic verbal elements (like the word “PREMIUM”) pronounced in a clear manner and without any striking or unusual sound elements, the sound mark will be considered non-distinctive.
• In principle, when the non-distinctive/descriptive/generic verbal element perceived in a sound mark is accompanied by other elements of sound, such as lyrics, a specific melody, intonation and/or a specific way of singing, which are also considered non-distinctive in themselves, the sound mark will most likely be considered non-distinctive as a whole as well.
• Motion marks will generally be considered distinctive if they contain a distinctive verbal and/or figurative element moving or changing its position, color and/or elements, even though the movement or change of position itself may not be distinctive.
• In principle, when the motion mark consists of a movement produced by or connected to the goods and/or services, or to other relevant features thereof, it will be perceived by the consumer merely as a functional element of, or for, the goods and/or services. Therefore, the motion mark will be considered non-distinctive.  
• When the motion mark consists of a non-distinctive/descriptive/generic verbal and/or figurative element moving or changing its position, color and/or elements, it will be considered non-distinctive unless the movement itself is sufficient to distract the attention from the message conveyed by the non-distinctive/descriptive verbal or figurative element.
• In general, when at least one of the elements of a multimedia mark, either the sound or the image, is considered distinctive in itself, the trademark as a whole will be considered distinctive.
• In general, the addition of a holographic effect to a non-distinctive verbal and/or figurative element will not necessarily be sufficient to give the mark distinctive character, since it will be perceived by the consumer merely as a banal or decorative element, regardless of whether it relates to the goods and/or services applied for.
• In general, if a link between the elements in the sound, motion, multimedia or hologram mark and the goods and/or services or their characteristics can be easily established, the mark will be considered descriptive  --  for instance the barking of a dog for “fodder for animals” in class 31.

Again, for more detailed information, you are welcome to refer to the complete Common Practice CP11 and the examples given at https://www.tmdn.org/network/converging-practices.

Should you have any questions regarding new types of trademarks and the best practice to file such applications, we will be glad to discuss strategic issues with you if you contact us at info@lexdellmeier.com or by phone at +49 89 55 87 98 70. We look forward to hearing from you!