Non-Traditional Marks The European Perspective

Transcription

1 Non-Traditional Marks The European Perspective 41 st IPO Annual Meeting, Boston MA Dr. Verena von Bomhard September 17, 2013

2 What can be a trademark? Short answer: (almost) everything that is a sign perceived with 5 senses; "no concepts" 2

3 Concepts? "Clear dust bin" 3

4 Trademarks need to be represented Currently: for requirement of graphical representation Current review of EU TM law: likely to be abolished Relevant for signs that can be (better) represented electronically (movements, sounds) ECJ "Sieckmann criteria" "clear, precise, self-contained, easily accessible, intelligible, durable, objective" Smells: no representation that complies with this 4

5 This leaves... sounds movement marks holograms colors position marks 3D marks / shapes Examples to follow 5

6 Practical relevance Legal interest in sounds, movements, smells etc. inversely proportional to their practical relevance Categories of greatest practical relevance (registration and, above all, enforcement): Colors Shapes Position marks Legal discussion: not (graphical) representation but distinctiveness (for all types) functionality (technical / aesthetic) (for shapes) 6

7 Sounds (musical notation) 7

8 Sounds (sonagram + mp3 file) 8

9 Movement 9

10 Holograms 10

11 Colors: single color yes secondary meaning 11

12 Colors: single color as applied to product yes, secondary meaning 12

13 Colors: color combination exceptionally yes secondary meaning 13

14 Position marks: yes 14

15 3D marks: product shapes very difficult 15

16 Bottles: found non-distinctive by General Court 16

17 3D marks: non-product shapes 17

18 Legal aspects: inherent distinctiveness Non-traditional marks are not subject to different abstract criteria... but: Presumption (contrary to lookalike studies): consumers are not guided by shapes or colors TM at issue must "depart significantly" from norms and customs of industry sector concerned Arguments that won't win: "first to use", excellent design, design prizes. Criteria from design / copyright law, found irrelevant for distinctiveness. 18

19 Legal aspects: acquired distinctiveness / secondary meaning How widely known? to "significant part of the relevant public" rule of thumb: 50% or not too far from that whether higher: currently before ECJ for color marks Where to prove? CTMs: in all 28 member states at least general data for all EU territories; to be on safe side: country by country (but: extrapolation possible) 19

20 Legal aspects: acquired distinctiveness / secondary meaning (2) How to prove? direct evidence of consumer recognition: surveys (!) indirect evidence: market position, duration of use, advertising expenditure, sales figures NB: evidence must relate to sign applied for where sign has been used only in combination with other signs (words, logos): survey is the only way of proving consumer recognition but: if survey shows this, the fact that the sign has not been used on its own is irrelevant (ECJ: Have a break...) 20

21 Workarounds: practical advice CTM: register with distinctive elements; use and build up market position; in later infringement action argue the color / shape is / has become distinctive element of complex mark in the specific jurisdiction Community design for new designs National marks in strong countries Reliance on unregistered rights (unfair competition; passing off) 21

22 Use issues Non-traditional marks are usually used in combination with other signs (words, logos) This use can maintain the non-traditional mark per se provided the sign is perceived as independently distinctive (... surveys!) Use that leads to acquired distinctiveness can also maintain the trademark registration Whether the complex sign as used (with logo) is also registered is irrelevant 22

23 Colloseum case 23

24 Thank you for your attention 24

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