Hmm, smells like CTM 009891881

The present proposal of 27 March 2013 to recast Directive 2008/95/EC, which is seeking to partially harmonise the laws of the Member States relating to trade marks, and Regulation (EC) No 207/2009 (on the Community trade mark) is driven by objectives such as modernising and improving the existing provisions of the Directive by amending outdated provisions, increasing legal certainty and clarifying trade mark rights in terms of their scope and limitations. In particular, the proposal considers amending Articles 3 of the Directive and 4 of the Regulation to remove the obligation to represent a trade mark graphically.

Specifically, under the proposal, Article 3 of the Directive would read:

A trade mark may consist of any signs capable of being represented graphically, in particular, words, including personal names, designs, letters, numerals, colours as such, the shape of goods or of their packaging, or sounds, provided

that such signs are capable of:

(a) distinguishing the goods or services of one undertaking from those of other undertakings.;

(b) being represented in a manner which enables the competent authorities and the public to determine the precise subject of the protection afforded to its proprietor.

The wording in (b) reflects the reality of a highly competitive environment in which companies use new technology, media and communication strategies to distinguish themselves from each other. For example, they use and file registrations for a new generation of marks that affect the different senses of the consumer, namely sound, smell, taste, touch, in addition, or in place of, vision.

The idea of the proposed amendment is not to extend unlimited modes of representation in respect of trade marks, but to allow more flexibility while increasing legal certainty as, at present, the current wording and case law in respect of the ‘unusual’ marks is somewhat unclear.

In this regard, whilst the European Court of Justice allowed the representation of a ‘smell mark’ in the form of the written description, ‘smell of freshly cut grass’ for tennis balls, on the ground that it was a “smell that everyone recognizes immediately on the basis of their own memories”, what happens in respect of unknown smells? Many fashion brands sell perfumes in their stores and online. However, these are highly unlikely to be smells that are recognisable in everyone’s memory and therefore likely to be considered unregistrable under the present guidelines. Further, currently, “the requirements of graphical representation are not satisfied by a chemical formula or by a description using the written word” (judgment of 12 December 2002 ‘Siekmann’,).

Also, with regards to taste, the perception of taste is subjective and variable. As a result, taste marks have been rejected on the grounds that they are not sufficiently capable of an accurate and repeatable graphical representation. For instance, there is no one apple taste, but varying apple tastes. So tastes are not objective and sustainable.

By removing the requirement for graphic representation in the new provisions, will these modes of representation previously rejected become acceptable? The proposed wording does allow for broader scope and interpretations, such that it potentially allows such representations.

That said, there remain numerous uncertainties with the trade mark protection of a sound, smell, taste or touch. Such uncertainties relate to the filing of a trade mark application, the examination of the application, and the distinctiveness of the mark, for example. Also, how does one keep a smell or taste, without degradation of its “distinctiveness” over time? Uncertainties relate also to trade mark searches in order to establish whether there are any earlier rights. It is unclear how one would conduct trade mark searches for sound, scent, taste or touch marks.

Therefore, despite proposed changes in the Directive, with the current ever changing technologies and in the absence of alternative administrative tools, the graphical representation of a mark might in fact be the better wording as it currently ensures legal certainty, albeit limiting the number of ‘unusual marks’ that are granted registered trade mark protection.

For those who speak French, please find more explanation of these uncertainties highlighted by CNCPI here.

Amélie Gérard  24 January 2014