http://ipkitten.blogspot.com/2023/04/multimedia-trade-marks-euipo-says-that.html
According to the EU Trade Mark regulation (EUTMR) it is possible to register
multimedia trade marks, i.e. those consisting of or extending to a combination
of image and sound.
The case
On 7 May 2019 Dutch company Chiever B.V. filed an
application for registration of a multimedia trade mark consisting
of a 22-second video featuring super-hero “Super Simon”
going on holiday in comic book style. The application was for goods and
services in classes 16, 33 and 41 (books, wine and cultural and relaxation
activities).
On 4th February 2020 (the decision is available in Dutch), the EUIPO
examiner refused the application due to lack of distinctiveness pursuant to art. 7 (1)(b) of the EUTMR. In short, the examiner found that
the sign was not perceived as a badge of origin due to the following
considerations: (1) the complexity of the video; (2) the fact that the clip did
not contain products and services clearly identified; (3) the identity of the
manufactures was not clear; (4) the clip did not provide a clear origin of
products/services as the usual spot for television; and (4) Super Simon lacked a
sufficient link with the products and services applied for.
On 7th March 2023, the EUIPO Board
of Appeal overturned this refusal and found the mark to be distinctive. The
Board also provided useful clarification on the requirements for registration of
multimedia marks. The decision is in Dutch but a machine English
translation is available here.
First, the Board of Appeal confirmed that, in
general, if at least one element (sound or image) of the multimedia sign is
distinctive, the whole multimedia mark will be distinctive.
Secondly, multimedia marks are necessarily
complex signs. The examiner therefore erred in noting that the relevant public
would not perceive the sign as a guarantee of origin, in particular because the
public would forget many elements of the sign, thus overcoming the complexity
argument . The Board held that the main character of the video “Super Simon” is
distinctive and that the relevant public will remember that it runs away to a
holiday destination.
Thirdly, the examiner considered that the sign
should be analysed as an advertisement for television and that it would not
identify company of origin of the products/services. Such an analogy with advertisements
was also rejected. The Board of Appeal recalled the case law (T -310/8, T-387/6) according to which it is not
necessary for a trade mark to convey precise information as to the identity of
the manufacturer of the goods or the provider of the services.
By taking a more flexible approach with regard
to validity of multimedia marks, the Board held the trade mark distinctive and
concluded that:
Consumers may not have previously been
accustomed to assigning a function of origin to a combination of images and
sounds. This has changed with the digital evolution. As also indicated in the
Common Communication on new types of marks, there is an increase in the number
of signs combining images and sound used as part of market strategies, which
will lead consumers to perceive them more as indications of commercial origin.
The applicant also rightly points out that the multimedia mark consists of
moving images and sounds to which modern consumers are entirely accustomed to
their mobile phone.
According
to the Board,
The mark applied for does not only have original features
(although they are not necessary), but the video also enables the public to
distinguish the goods and services in question from those with a different
commercial origin.
Thoughts
on validity and enforcement of multimedia trade marks
The digital world is bringing new questions for
IP offices regarding the classification and examination of multimedia trade marks.
New questions arise for applicants too, especially regarding how to sustain
brand presence in the virtual world. One should bear in mind that innovative
types of trade marks must always meet the general requirements of every trade mark,
notably distinctiveness, but also that a rather flexible approach looks to be
on the way according the decision at issue.
It will be also interesting to see to what extent
multimedia trade marks will be successfully enforced through traditional
litigation procedures. The assessment of whether a third party’s multimedia
sign may infringe a registered multimedia trade mark seems not an easy one to
undertake, especially when considering the degree of distinctiveness of a
multimedia trade mark and its scope of protection (i.e., simply with regard to
the duration of the whole registered video and to the allegedly infringing
one).
Picture of the cat: courtesy of Elisa and Otto from Italy.
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