in case electronic filing is available, the presentation of the mark in the form of an analog or digital recording. The representation of position marks (Area of Convergence No. 5), allows disclaiming of matter for which protection is not sought by use of broken or dotted lines.
For the representation of gesture marks (Area of Convergence No. 6), trademark offices may require, where electronic filing is available, the use of analog or digital recordings.
Again, the representation for sound marks (Area of Convergence No. 7), makes a reference to the possible submission of an analog or digital sound recording and suggest that, were electronic filing is available, applicants should have the possibility to submit those types of files.15
With regard to olfactory marks, taste marks and texture or feel marks (Areas of Convergence Nos. 8, 9 and 10), the SCT could not reach an agreement, with opinions remained divided as to whether those type of marks can be adequately represented by descriptions or not.
IV. Singapore Treaty on the Law of Trademarks
The Areas of Convergence Concerning the Representation of Non-tradi-tional Marks were noted by the WIPO General Assembly in 2009. At the same meeting of the WIPO Assemblies, the Singapore Treaty Assembly approved the initiation of a review of Rule 3(4) to (6) of the Regulations under the Singapore Treaty with a view to align that Rule with the Areas of Convergence. To that effect, the Singapore Treaty Assembly approved the convening of one session of a Working Group.16, 17
15 Note in this respect the different wording between Areas of Convergence No. 4 and 7, the former saying that offices may require the submission of analog or digital files, whereas the latter leaving this choice to the applicant–thereby implying that offices that operate e-filing should accept those types of files as part of the application. Note also an express reservation at the end of area of convergence No.6 that derogates from this general rule. This reservation was requested, at the time, by the European Union and its Member States, which operated a graphic representation requirement for trademarks.
16 Document STLT/A/1/4, para. 12.
17 On March 17, 2019, the Singapore Treaty had 48 Contracting Parties (see https://
www.wipo.int/export/sites/www/treaties/en/documents/pdf/singapore.pdf ).
The creation of an Assembly of the Contracting Parties of the Singapore Treaty with the power to amend the Regulations under that Treaty18was an important outcome of the revision of the Trademark Law Treaty of 1994, which had been adopted without such an Assembly. Rule 3 of the Regulations under the Singapore Treaty deals with the representation of trademarks that feature in applications. At the time of its original adop-tion in 2006, this Rule covered details for the representaadop-tion of trade-marks reproduced in standard characters, tradetrade-marks claiming color, and details concerning the reproduction of three-dimensional trade-marks.19Details concerning the reproduction of hologram, motion, color and position trademarks as well as the reproduction of non-visible trade-marks remained unresolved and were referenced to the applicable na-tional law.20
In its only session in June 2010, the Working Group reviewed the rele-vant Rules concerning the representation of marks and aligned those Rules with the Areas of Convergence. It then recommended to the Singa-pore Treaty Assembly the adoption of the revised Rules with a date for entry into force of November 1, 2011, which the Assembly followed.21 Rule 3(4) to (10) of the Regulations under the Singapore Treaty as in force on November 1, 2011, defines thus standards for the representation of three-dimensional, hologram, motion, color, position and sound trade-marks and for tradetrade-marks consisting of non-visible signs other than sounds. These rules follow largely the Areas of Convergence. In particu-lar, Contracting Parties to the Singapore Treaty shall grant a filing date to the application for a three-dimensional trademark, even if the trademark is presented in only one view.22
Concerning sound trademarks, trademark offices of Contracting Parties may require the filing of analog or digital recordings of the sound.23As regards motion trademarks, the possibility to require an analog or digital recording of the motion as well as the reference to multimedia trade-marks, as contained in Area of Convergence No. 6, is not expressly
re-18 Article 23(2)(ii) of the Singapore Treaty.
19 Rule (1), (2) and (4) of the Regulations under the Singapore Treaty on the Law of Tra-demarks.
20 Rule 3(5) and (6) of the Regulations under the Singapore Treaty on the Law of Trade-marks as adopted in 2006 and in force prior to November 1, 2011.
21 Document STLT/A/2/2, para. 8.
22 Rule 3(4)(e).
23 Rule 3(9).
tained in Rule 4(6) under the Singapore Treaty. Rule 4(6) merely refers to the reproduction of a motion by a series of still or moving images depict-ing movement.24With regard to color trademarks, trademark offices may require an indication of the color or colors by a recognized color code chosen by the applicant and accepted by the Office.25However, agree-ment for details for the representation of non-visible signs other than sound trademarks could not be found and this matter is left to the indi-vidual laws of Contracting Parties.26
The work of the SCT on non-traditional trademarks, starting with infor-mation gathering and leading to the adoption of the «soft law» Areas of Convergence eventually permitted the creation of «hard» international law binding the Contracting Parties of the Singapore Treaty as to the re-presentation of those types of trademarks. In the process, it also resulted in the first international recognition of non-traditional trademarks, although the «soft» and «hard» law instruments concerned do not fore-see an obligation to protect those types of marks. Nevertheless, this work is a good example for a flexible approach to international norm develop-ment in intellectual property, which can take place at different levels of the hierarchy of international norms. In particular, it enables all WIPO Member States to participate in the exercise and to influence its outcome in accordance with their own preferences as to the degree to which they are prepared to undertake binding commitments.
V. Non-traditional trademarks under the Madrid System
27The Madrid System for the International Registration of Trademarks is governed by the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks of 1989, as well as the Regula-tions thereunder (as in force on November 1, 2017) and the Administra-tive Instructions (as in force on April 1, 2018).28
24 In the light of recent legislative developments, a revision of this Rule in order to align it closer Area of Convergence No. 6 is indicated.
25 Rule 3(7) of the Regulations under the Singapore Treaty on the Law of Trademarks.
26 Rule 3(10) of the Regulations under the Singapore Treaty on the Law of Trademarks.
27 See Document MM/LD/WG/16/4 New Types of Marks and New Means of Repre-sentation.
28 https://www.wipo.int/madrid/en/legal_texts/, last accessed on April 25, 2019.
Before a trademark can be filed internationally, it has to be either filed or registered with the trademark office of the Contracting Party from which the applicant derives the entitlement to file an international registration (also referred to as the «office of origin»).29The Madrid Protocol does not contain a definition of acceptable trademarks. It thus follows, that any kind of mark that can be filed or registered with the office of origin can be the subject of an international application.
Nevertheless, regarding the representation of internationally filed trade-marks, the Regulations under the Madrid Protocol apply ade facto gra-phical representation requirement, since trademarks must be gragra-phically represented in international applications, either on paper or in the form of a digital graphic file, where the application is filed electronically.30In this context, the question arises whether the Regulations under the Ma-drid Protocol should be amended as to enable applicants the filing of non-traditional trademarks represented in non-graphical forms, such as digital sound or video recordings.31
In this respect, the 16thsession of the Working Group on the Legal Devel-opment of the Madrid System («the Madrid Working Group») decided to conduct a survey among Offices of the Contracting Parties of the Ma-drid Protocol on acceptable types of marks and means of representation, and to consider possible changes to the Regulations with a view to accom-modating new means of representation.32
VI. Conclusion
The Work of the WIPO SCT and Singapore Treaty Assembly has firmly established the notion of an important number of non-traditional trade-marks in the international legal framework for trademark law. This was done through a combination of soft and hard law instruments, thereby taking into consideration the various degrees of readiness of WIPO Member States to commit to the recognition of those types of marks.
Moreover, this development is about to find its way into the International Madrid Trademark System. Although the latter provides already a
possi-29 Madrid Protocol Article 2(1).
30 Rule 9(4)(a)(v) of the Regulations under the Madrid Protocol.
31 WIPO document MM/LD/WG/16/4.
32 WIPO document MM/LD/WG/16/11, para. 17.
bility for the international registration of graphic representations of non-traditional trademarks, at present it does not accommodate non-graphic representations of such trademarks. The work of the Madrid Working Group might well lead to a change of this approach.
The Curious Case of Unconventional Trade Marks
PhilippVONKAPFF1
I. Introduction
Traditionally, trade marks were figurative signs or words; but obviously other types of signs can also exercise the main function of a trade mark, namely to distinguish the products of one company from those of an-other company. However, there may be a difference between theory and practice. The public is accustomed to perceiving word or figurative marks immediately as signs identifying the commercial origin of the goods. The same is not necessarily true for other types of signs, for exam-ple, where the sign for certain goods or services forms part of the external appearance of the goods or where the sign is composed merely of a color or a color combination2If a shape, colour, smell, taste or combination thereof attracts and speaks to a consumer group, the undertakings usual-ly pursue this insight into consumer preferences and use it strategicalusual-ly.
The main problem areas of such unconventional marks are: How to reg-ister the signs and what scope of protection to allow? A first problem is that unconventional trade marks are not always clear and precise and do not always enable the competent authorities and the public to determine the clear and precise subject matter of the protection of the mark. A sec-ond particularity is the overlap with other IP rights such as patents, de-sign or copyright, with different sets of conditions and limited validity terms. Thirdly, the consumer is not in the habit to perceive many of the unconventional signs as trade marks.
1 Member of the EUIPO First Board of Appeal. All opinions expressed by the authors are their personal opinions, not those of the Boards of Appeal or the EUIPO. Credits to Iveta Stoycheva for her valuable contributions to this article.
2 09/10/2002, T–173/00, Colour (shade of orange), EU:T:2002:243.
II. Trade marks to be clear and precise
The legal reform abandoned the notion of graphic representation in the general definition of a trade mark both in the EUTMR and in the TMD harmonizing national law. This made it necessary to modify the
im-plementing provisions. For the first time, the regulations have defined in the Implementing Regulation (EUTMIR) different types of trade marks in a systematic way, in order to specify the conditions of the filing date.3 Interestingly, the legal basis4 for those conditions is to be found in the context of the filing date and not in the general definition of the trade mark in Article 4 EUTMR. Still, both provisions are linked, now even by means of a specific cross reference, underlining the importance of the need to have a clear Register and precisely defined signs as from the filing date.
Obviously, the legal definitions should not apply retroactively to pre-re-form trade marks even though it will certainly have itsde factoinfluence on the understanding and interpretation of such trade marks. Nor are the definitions part of the harmonized EU trade mark law in TMD, but only in the Implementing Regulation. This bears the danger of diverging leg-islation and case law, unless the Court of Justice harmonizes its case law within the European Union through the interpretation of Article 3 TMD and Article 4 EUTMR. Note is taken that legislators work also on a har-monization on a world-wide level through the Singapore treaty.
After the EUTM legal reform, one of the important changes in the Imple-menting Regulation was a further focus on the principle of «What you see/hear is what you get». As a consequence the representation of the trade mark may only be accompanied by a description in the cases of po-sition, pattern, colour combination, motion marks. In addition, a descrip-tion is still possible for other types of marks5than word, figurative, shape, single colour, sound, multimedia, hologram, for which a description is not allowed.
3 VONKAPFF, inVONBOMHARD/VONMÜHLENDAHL, Concise European Trade Mark Law, 3rdedition, 2019, Article 4 EUTMR, point 3.
4 Art. 31(1)(d), 32, 41(1)(a) EUTMR: «An application for an EUTM shall contain: […]
(d) a representation of the mark, which satisfies the requirements set out in Article 4 (b); Art. 31(4) EUTMR, Article 3(3) EUTMIR: i. a.g) sound marks, h) motion marks, i) multi-media marks, j) hologram marks.»
5 For tactile mark see for example 30/10/2007, R 1174/2006–1, Kraftfahrzeugteil (Tastmarke).
A. Sound marks
One of the winners of the legal reform are sound marks, as the notion of graphic representation has been abandoned in Article 4 EUTMR and
«sound» has been added to the examples of trade marks there. As to the conditions of filing, Article 3 EUTMIR states that in the case of a trade mark consisting exclusively of a sound or combination of sounds (sound mark), the mark shall be represented by submitting either (i) an audio file reproducing the sound or (ii) by an accurate representation of the sound in musical notation.
It is striking to observe that the conditions of registration do not allow a description of the sound any more. The field on the application form al-lowing adding a description will probably not have any legal value except for the sake of a priority claim.
The impossibility to describe the trade mark may contradict with the gen-eral conditions that a sound mark must be clear, precise, self-contained, easily accessible, intelligible, durable and objective6.
The CJEU had stated in the early days that, as concerns the representa-tion of a sound sign by a descriprepresenta-tion using the written language, it cannot be precluded a priori that such a mode satisfies the requirements.7 How-ever, it was considered not sufficient to refer to a sound as «the first nine notes of Beethoven’s song «Für Elise» the indication of the notes E, D#, E, D#, E, B, D, C, A, («mi, re#, mi, re#, mi, si, re, do, la»), a reference to the natural sound of a cockcrow or an onomatopoeic equivalent (kikier-iki).
However, the Court of Justice, and now the Implementing Regulation still allow a sequence of musical notes alone, such as . The prohibition of adding a description is problematic in case of words,
such as in songs or spoken text.Where the song is recorded, the lyrics can-not be added. This appears to be different in the case of the musical can- nota-tion. The musical notation of a song that is supposed to be interpreted by voice(s) obviously must include the lyrics.8
6 See [olfactory] 12/12/2002, C–273/00, Sieckmann, EU:C:2002:748; [colour] 06/05/
2003, C–104/01, Libertel, EU:C:2003:244; [sound] 27/11/2003, C–283/01, Musical notation, EU:C:2003:641; [combined colours] 24/06/2004, C–49/02, Blau/Gelb, EU:C:2004:384.
7 27/11/2003, C-283/01, 27/11/2003, Musical notation, EU:C:2003:641 § 59.
8 27/11/2003, C-283/01 27/11/2003, Musical notation, EU:C:2003:641, § 61. In
deci-B. Combination of colours
According to Article 3(3)(f ) EUTMIR, colour marks are either single col-our marks without contcol-ours or a combination of colcol-ours without con-tours. For colour combinations, the EUTMIR has applied the case-law according to which the representation «must be systematically arranged by associating the colours concerned in a predetermined and uniform way», as the Court of Justice stated that the mere «juxtaposition of two or more colours, without shape or contours, or a reference to two or more colours in every conceivable form», did not meet the requisite standards of precision and uniformity (24/06/2004, C-49/02, Blau/
Gelb, EU:C:2004:384, § 33–34). As the trade mark’s subject matter of protection is exclusively determined by the representation itself, any vo-luntary description detailing the systematic arrangement must accord with the representation (i. e. it cannot be inconsistent with the image shown) and must not extend beyond its subject matter (Article 3(2) EU-TMIR). In addition, a lack of accord between the representation and the
description leads to a lack of clarity and precision of the mark (Article 3 (2) EUTMIR).
Thus, in the joined Cases T-101/15 and T-102/159 Red Bull v EUIPO (appealed before ECJ), a decision of the EU General Court, is not about the design of Red Bull cans. It is about two trade mark registrations for energy drinks for the colour combination blue and grey, represented in two squares placed side by side as shown in the table below, with the marks’descriptions as applied for.
sion 29/09/2003, R 781/1999–4, ROARING LION SOUND (sound mark), the Fourth Board of Appeal holds that the «graphic representation of a noise–such as a lion’s roar or a roll of thunder–by means of a sonogram results from analysis of the pitch (frequency), relative volume (frequency content) and progression over time of the sound occurrences.» Therefore a sonogram «is comparable with repre-sentation using musical notation». On the other hand a sonogram without any time-scale (horizontal) or frequency time-scale (vertical) cannot be read. A sonogram was ac-cepted as means of graphic representation of a sound in case 08/09/2005, R 295/
2005–4, Sound also containing a description of a spoken text; however the decision expressed doubts as to the scope of protection.
9 30/11/2017, T–101/15 & T–102/15, 30/11/2017, Blue and Silver (COLOUR MARK), EU:T:2017:852.
EUTM 2534774 EUTM 9417668
Protection is claimed for the col-ours blue (RAL 5002) and silver (RAL 9006).The ratio of the col-ours is approximately 50%–50%.
The two colours will be applied in equal proportion and juxtaposed to each other. Blue (Pantone 2747C), silver (Pantone 877C).
The General Court rejected the appeal against the decision to declare the trade mark invalid many years after filing and registration of trade marks for the infringement of Article 4 EUTMR. Distinctiveness was not the issue. The core of the reasoning is that «the mere indication of the ratio of the two colours blue and silver» which «allowed for the arrangement of those colours in numerous different combinations» did not «therefore constitute a systematic arrangement associating the colours in a predeter-mined and uniform way, producing a very different overall impression and preventing consumers from repeating with certainty a purchase ex-perience». The marks were not sufficiently clear and precise for registra-tion purpose. It remains to be seen how colour combinaregistra-tion marks will be delimited to position marks.10
This leaves the further question whether a single trade mark is clear and precise without an indication how the trade mark may be applied to the product or in publicity. In particular, there is very limited experience in the area of proof of use of a colour or colour combination mark.
C. Motion marks, multimedia marks, hologram marks Article 3(3)(h) EUTMIR defines motion marks as «trade mark(s)
consist-ing of, or extendconsist-ing to, a movement or a change in the position of the ele-ments of the mark». Motion marks do not include sound (which differ-entiates them from multimedia mark). The definition does not restrict motion marks to those depicting movement. A sign may also qualify as
consist-ing of, or extendconsist-ing to, a movement or a change in the position of the ele-ments of the mark». Motion marks do not include sound (which differ-entiates them from multimedia mark). The definition does not restrict motion marks to those depicting movement. A sign may also qualify as