State of play: Unconventional forms of trademark in Germany and the EU following EU reform package

The EU and German national trademark laws have been amended in the recent years as a result of a EU reform package.

As a result of these amendments, "unconventional forms of trademarks" such as sound and motion trademarks can be registered more easily and multimedia trademarks, consisting of a movement together with a sound, can be registered for the first time. Consequently, the scope of signs eligible for trademark protection has been extended by the reform.

Indications of origin which may have already been used in the past, but which could not be entered in the register, can therefore now be registered in many cases and thus be better enforced. Nevertheless, a glance at the German and the EU trademark register shows that only relatively few of these "unconventional forms of trademarks" have been applied for or registered so far.

This publication takes stock of these new forms of trademark in particular with regard to questions of distinctiveness.

Previous Legal Situation

Both at EU level and in German trademark law, the requirement of graphic representability applied until the reform, meaning that a trademark needed to be representable on paper. If not, the sign could not be registered as a trademark. This facilitated the administrative handling of the IP offices and enabled the public in general to be able to clearly determine the subject-matter of trademark protection.

In Sieckmann, the ECJ specified what "graphic representability" meant. It ruled that any sign could be a trademark provided that it could be represented graphically, in particular by means of figures, lines or characters, and that the representation was clear, precise, self-contained, easily accessible, intelligible, durable and objective.

For sound trademarks, this meant that a graphic representation had to be made in standard musical notation. Although this representation was not immediate, it was easily understandable, so that the public could easily identify the sign for which registration as a trademark was sought. For motion trademarks, it was possible to file a graphic representation which divided the motion sequence into individual images like a flip book (in Germany limited to six individual images). This could be supplemented by a description of the mark.

New Legal Situation

Formal requirements: According to the new legal situation, a trademark may consist of signs, provided that such signs are capable of being represented on the Register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor. Thus, the criteria set out in Sieckmann were incorporated into the law.

The above provision initially affects the representation of the trademark and the documents to be submitted for this purpose. Formally, the filing of data carriers is now explicitly provided for in the EU and German regulations. Consequently, sound, which cannot be represented in normal musical notation, can for the first time be filed as sound trademarks. Also, more complex motion sequences can be filed as motion trademarks.

Distinctiveness: The fact that the scope of signs that can be registered has been broadened does, however, not mean that any signs applied for will also be registered. Insofar, the general principles apply to the assessment of distinctiveness of unconventional trademarks.

Therefore, "unconventional forms of trademarks" must be perceived by the public as distinctive. Hence, they must be capable of identifying the goods or services claimed as originating from a particular undertaking and thereby distinguishing those goods or services from those of other undertakings. 

Now let’s take a look at how courts and official decisions have approached these new requirements for distinctiveness in the case of unconventional forms of trademarks. The more unconventional trademarks will be applied for in practice, the more specific the criteria will become.

Sound trademarks: The case law of the CFI shows that simple tone sequences consisting of only two consecutive identical notes are devoid of distinctive character. Sound trademarks must therefore have a certain degree of recognition.

The reason for this is that they are not visually perceptible signs and that the public is less used to recognizing an indication of origins in sounds in comparison to word or word/figurative trademarks. The sound or noise must therefore be perceived as a distinctive sign and not merely as non-distinctive background sound or as a sound directly related to the goods or services e.g. the sound of a motor for cars. With this in mind, it’s important to note that in certain economic sectors, such as television broadcasting, it is not unusual to identify goods/services by means of sounds originating from a specific company.

An unusual or catchy melody, on the other hand, may be capable of being perceived by the public as an individualized reference to goods or services. In this respect, it seems likely that the longer the sequence of notes or melody is, the more likely it is that the distinctive character will be rejected.

Multimedia and motion trademarks: From the first decisions of the EUIPO since the reform package a certain pattern can be seen which establishes comparable principles for both multimedia and motion trademarks.

Some decisions have rejected the registration of a motion or multimedia trademark if a "conventional" trade name/logo was not clearly recognizable. This is probably based on the assumption that the public is accustomed, in particular, to the visual perception of word and word/figurative trademarks.

Trademarks were also rejected for lack of distinctiveness if the elements/movements shown were too banal and will not be remembered. This would likely be the case if the trademark applied for did not contain anything fanciful, imaginative or striking.

The movement shown (motion trademarks) or the connection with a sound and a movement (multimedia trademarks) must not be seen as a mere decorative element. This is a familiar concept for standard word and figurative trademarks, namely that figurative elements which are merely decorative in themselves cannot help a descriptive word element to be eligible for trademark protection. The takeaway here then is that the combination of a sign  which is not distinctive per se with a merely decorative movement/sound will likely not lead to the overall sign being regarded as distinctive.

As with sound marks, it is likely that multimedia/movement trademarks will not be accepted if they are too long and complex. Here consideration should be given as to whether the trademark is self-contained and whether the public will remember the sign as a whole and thus perceive it as an indication of origin.

Conclusion

Even if there are still some uncertainties due to the low number of unconventional trademark applications since the reform package, the new forms of trademarks offer companies new possibilities for protection of signs already used in commerce. Based on the practice so far, it seems likely that motion and multimedia trademarks showing "conventional trademarks", i.e. signs that are already registered as word and/or word/figurative trademarks, will be registered. There remain more uncertainties with regard to signs not showing these "conventional trademarks". As regards sound trademarks, the difficulty will likely be to establish when a sound trademark is too long or alternatively, not long and fanciful enough.

Authored by Dr. Sabrina Mittelstädt