EU Trade mark reforms mean that unconventional trade marks such as smells and sounds may be protected under trade mark law.
The European Parliament backed a new directive designed to “approximate” the different national trade mark, and a new regulation that updates existing Community trade marks on Tuesday. The changes had already been endorsed by the EU’s other law-making body, the Council of Ministers.
The new regulation is likely to come into force within the first few months of 2016, whereas the directive will need to be transposed into national laws, although it could be early 2019 before the new rules have been adopted.
One of the main changes, will be the removal of the need for a trade mark to be capable of graphic representation. Instead it will be sufficient that the proposed trade mark can be “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”.
Businesses should reassess their trade mark portfolios and assess whether there are opportunities to expand the protection of business assets which including smells, sounds and other unconventional trade marks.
According to a non-binding recital set out in the new regulation “a sign should be permitted to be represented in any appropriate form using generally available technology, and thus not necessarily by graphic means, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective”. Similar provisions are contained in the directive.
Among the other changes being implemented under the new regulation is a change in terminology. A Community trade mark will in future be referred to as a European trade mark. In addition, the existing Office for Harmonisation in the Internal Market (trade marks and designs) will change its name to the European Union Intellectual Property Office.