Despite claims that European trade mark reforms, which came into force on October 1, would give manufacturers more protection over non-traditional trade marks, doubts have been raised over whether enforcement would be practical “in view of the seemingly narrow scope of protection granted”, according to Bond Dickinson.
Non-traditional trade marks include sound, multi-media, motion, hologram and position marks.
While some firms have succeeded in their shape mark applications, such as Mondelēz for its Toblerone packaging shape, other applicants continued to struggle in their attempts to register non-traditional marks, the law firm explained.
It cited Red Bull’s application for its blue-silver colour combination mark, which was rejected due to a lack of sufficient precision.
Under the new rules, the requirement for “graphical representation” has been abolished and replaced with a requirement that the mark’s representation must simply be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”.
However, Bond Dickinson said that applicants had faced difficulties in demonstrating that these signs were capable of fulfilling the essential function of a trade mark for example, being a badge of origin, or that they have the necessary distinctiveness.
It added that the recent failed attempt by Nestlé to register a four finger bar as a shape trade mark, known commonly as the ‘Kit Kat case’, showed the issues applicants faced when trying to demonstrate that these non-traditional marks deserved registration.
Such applications faced a higher evidential burden to demonstrate their acquired distinctiveness, the law firm added.
Enforcing these registrations
Even if marks proceed to registration, there seemed to exist significant limitations in terms of enforcing these registrations, explained Bond Dickinson partner Patrick Cantrill.
“While the usual advice is that registration is king, some trade marks are granted with such a narrowly drawn specification or scope that enforcement against ‘identical’ or ‘similar’ marks presents a whole raft of difficulties in determining what these terms mean,” Cantrill said.
“Established tests as to what constitutes infringement rely on aural, visual and conceptual similarity – criteria which cannot be applied to a number of these non-traditional marks.”
While the new trademark rules presented opportunities, manufacturers must carefully consider the value of these non-traditional marks in enforcement strategies, he added.