3D, colour and sound marks: challenges EUIPO

Transcription

1 3D, colour and sound marks: challenges EUIPO

2 Definition of 3D trademarks 2

3 A separate category of trade marks is that of 3D trade marks. These can be grouped into three categories: 1. Shapes unrelated to the goods and services themselves, 2. Shapes that consist of the shape of the goods themselves or part of the goods, 3. Shapes of packaging or containers 3D marks may also contain verbal, figurative elements or colours. 3

4 1. Shapes unrelated to the goods and services themselves Shapes that are unrelated to the goods or services themselves are usually distinctive. 4

5 EUTM cl. 30 EUTM cl. 29, 30, 42 EUTM cl. 3, 41 EUTM cl. 10, 21 5

6 EUTM cl. 36, 39, 42 EUTM cl. 9, 16, 28, 41 EUTM cl. 6, 21 EUTM cl. 16, 28, 30 6

7 EUTM cl. 18, 25, 35 EUTM cl. 43 EUTM cl. 29, 30, 35 7

8 2. Shapes that consist of the shape of the goods themselves or part of the goods For a shape that is the shape or the packaging of the goods applied for, the examination should be conducted in the three following steps. Steps: First examine what might be prohibited (grounds for refusal under Section 9(3)). Second, determine if the 3D representation contains elements that might give the TM a distinctive character (i.e. words and/or figurative elements). Third, check the criteria for distinctiveness: whether the shape is so materially different from basic, common or expected shapes that it enables a consumer to identify the goods just by their shape and to buy the same item again if he has had positive experiences with the goods. 8

9 Shapes representing the goods themselves EUTM cl. 20 EUTM cl. 20, 21, 25 EUTM cl. 30 EUTM cl. 9, 11 9

10 EUTM cl. 12, 28 EUTM cl. 11 EUTM cl. 4, 34, 35 EUTM cl. 7 10

11 EUTM cl. 10 EUTM cl. 10 EUTM cl. 3 EUTM cl

12 EUTM cl. 16 EUTM cl. 12 EUTM cl

13 cl

14 3. Shapes of the packaging As for the shapes of the good itself, or part of a good, for 3D signs having the shape of the packaging the same criteria apply, especially as regards bottles or containers for the goods. Steps: First,examine what might be prohibited (grounds for refusal under Section 9(3)). Second, determine whether the shape applied for is materially different from a combination of basic or common elements and is striking. (i.e. in order to assess the distinctiveness of a milk container, the search must be carried out in relation to containers for beverages in general). 14

15 Containers 15

16 EUTM cl. 29, 40 EUTM cl. 5, 29, 30 EUTM cl. 3, 14, 26, 31 EUTM cl. 29, 30 16

17 EUTM cl. 30 EUTM cl

18 EUTM cl. 20, 21 EUTM cl. 3, 20, 21 EUTM cl

19 EUTM cl. 21, 32, 33 EUTM cl. 3 EUTM cl

20 Definition of colour marks: 20

21 Where colours or colour combinations as such are applied for, the appropriate examination standard is whether they are distinctive either: if applied to the goods or their packaging, or if used in the context of delivery of services. It is a sufficient ground for a mark to be refused if the mark is not distinctive in either of these situations. For colour combinations, examination of distinctiveness should be based on the assumption that the colour combination in the way it is filed appears on: the goods or their packaging, or in advertisements, or promotional material for the services. 21

22 1. Single colours As a rule a colour per se is not used as a means of identification in current commercial practice. A colour is not normally inherently capable of distinguishing the goods of a particular undertaking. Therefore, single colours are not distinctive for any goods and services except under very special circumstances. Such very special circumstances require the applicant to demonstrate that the mark is absolutely unusual or striking in relation to these specific goods. 22

23 Unusual or striking colours when used in connection with particular goods or services - Purple for foodstuff for cats, milk for cats (EUTM , cl. 31) - Black for stationary (EUTM , cl. 16) Usual and non-striking colours when used in connection with particular goods or services - Black for propane bottles (EUTM , cl. 6) 23

24 Single colour EUTM Cl. 38, 42 EUTM cl

25 EUTM cl. 2, 16, 17 EUTM cl. 30 EUTM Cl

26 EUTM cl. 7 EUTM cl. 6 EUTM cl. 4, 37 26

27 EUTM cl. 16 EUTM cl. 37, 39, 42 EUTM Cl

28 EUTM cl. 9, 12 EUTM cl. 10 EUTM cl. 1 28

29 2. Combination of colours The graphic representation: Should clearly indicate the proportion and position of the various colours. Systematically arranging them by associating the colours in a predetermined and uniform way A refusal can only be based on specific facts or arguments, i.e.: Commonplace colour for the product Natural colour of the product An objection applies in the same way as if there were only one colour. 29

30 Situations to be nevertheless refused: 1. In many instances, a colour would merely be a decorative element of the goods or comply with the consumer s request (e.g. colours of cars or T-shirts), irrespective of the number of colours concerned. 2. A colour can be the nature of the goods (e.g. for tints). 3. A colour can be technically functional (e.g. colour red for fire extinguishers, various colours used for electric cables). 4. A colour may also be usual or generic (e.g. again, red for fire extinguishers, yellow for postal services). 5. A colour may indicate a particular characteristic of the goods such as a taste (yellow for lemon taste, pink for strawberry taste). 6. A colour combination should also be refused if the existence of the colour combination can already be found on the market, in particular if used by several different competitors (e.g. we were able to demonstrate that the colour combination red and yellow is used by various enterprises on beer or soft drink cans). 30

31 EUTM cl. 16 EUTM cl. 29, 30, 33 EUTM cl. 1, 3, 5, 16, 35, 38, 41, 42 31

32 3. Three and more colours They can be accepted (the possibility of another trader choosing the same three colours is remote) EUTM cl. 7, 12, 25 EUTM cl. 7, 12, 28 EUTM cl. 5, 29, 30, 31, 32 32

33 EUTM: some examples (colours) EUTM cl. 29, 30, 32, 33 EUTM cl. 9, 16, 35, 36, 38, 42 EUTM cl. 9, 12, 14 33

34 EUTM cl. 9, 16, 42 EUTM cl. 39, 41 EUTM cl. 3, 9, 14, 18, 21, 27 35

35 Definition of sound marks 36

36 A sound must be represented graphically, particularly by means of: images, lines or characters and its representation must be: clear, precise, self-contained, easily accessible, intelligible, durable and objective 37

37 The Court states that, as concerns the representation of a sound sign by a description using the written language, it cannot be precluded a priori that such a mode of graphical representation satisfies the requirements [as defined in the Directive]. However, it is not sufficient to refer to a sound as the first nine notes of Beethoven s song Für Elise as it lacks precision and clarity and therefore does not make it possible to determine the scope of protection sought It is not sufficient to list the notes, e.g. E, D#, E, D#, E, B, D, C, A, this does not constitute a graphical representation for the purpose of Article 2 of the Directive either. This type of description is not clear, precise, self-contained and it does not make it possible [ ] to determine the pitch and the duration of the sounds forming the melody in respect of which registration is sought 38

38 For an animal noise it is not sufficient to provide a word which is an onomatopoeic equivalent as it must be held that there is a lack of consistency between the onomatopoeia itself, as pronounced, and the actual sounds or noises, which it purports to imitate phonetically. (e.g. the sound of a cockcrow) What is this? 39

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44 Expert s name: Natalie Pasinato Expert s title: IP Expert European Union Intellectual Property Office (EUIPO) Thank You