With the directive 2015/2436 et regulation (UE) 2015/2424), the European Parliament and Council have organized for the requirement of graphic representability of trademarks to be deleted, thus paving the way for other identification systems. This so-called “Trade Mark Reform Package”, could be the manifestation of an overhaul in European trade mark law as it marks a transition from a description-based protection to one that calls on all our senses: sight, hearing, taste and touch.
I. From a “descriptive” trademark…
The requirement of “graphic representability”
Until recently, the previous European directive (2008/95/CE) defined a trade mark as “any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings” (article 2).
To this day, there has been no law or regulation forbidding a sound, a scent, a taste or a texture from being registered as a trade mark in France. However, the graphic representability was, to this day a requirement for the existence of a trade mark.
Let us take smell as an example: a relatively recent marketing trend consists in well-known brands diffusing recognisable scents in their outlets. How could such a scent (from a perfume, a candle, or even a tyre) be registered as a trade mark?
« The smell of freshly-cut grass »
As an example, the United Kingdom Intellectual property office acknowledges scents when they are precisely described: “a floral fragrance/smell reminiscent of roses” for tyres and a “strong scent of bitter beer” for flights for dart.
Similarly, the European trade mark office (OHIM) has authorised to trade mark the smell of “freshly-cut grass” for tennis balls in 1999, and held that it was a “distinct smell which everyone immediately recognises from experience. »
Nonetheless, this solution remains the object of controversy since such a trade mark could not be perceived objectively, and each individual would have different perception of it. This would not allow for a clear and precise identification of the protected object.
Consequently, three years later, the European Court of Justice (ECJ) reconsidered the criteria and held that “the requirements of graphic representability are not satisfied by a chemical formula, by a description in written words (“a balsamic fruity scent with a slight hint of cinnamon”), by the deposit of an odour sample or by a combination of those elements”.
…To the inception of the “feeling” brand
So, what do we register now?
After the so-called “Trade Mark Reform Package”, European trade mark offices have open a range of possibilities, allowing, for example, an olfactory trade mark to be registered with a sample of the scent and its graphic representability.
With this deposit of a sample, we have moved on from an objective requirement – the graphic representability of the trade mark – to a more subjective requirement, i.e. a representability “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.” (article 3 of the new Directive and article 4 of the new Regulation).
In that sense, we have moved on from a “description-based system” to a “feeling-based system”.
How will registration offices manage? How will we, for that matter?
Although this reform offers broad new perspectives, the “Trade Mark Reform Pack” may present future challenges that we should anticipate:
- • Registering trade marks with the competent offices. Deleting the requirement of a graphic representability may prove to be a problem for the competent offices who do not presently have the human and technical means to examine these unconventional requests. As the purpose of registering a trade mark is to make it legally binding on third parties, the latter must imperatively be able to identify the trade mark easily and precisely, and this may be a challenge after the reform.
- • The requirement of a distinctive trade mark. One of the main difficulties we may come across upon choosing a smell as a distinctive sign is that smells are closely linked to the product itself (e.g. olfactory trade marks for perfumes or candles). In other words, it may prove impossible to register a trade mark as a non-distinctive sign if the value of the fragrance is deemed to stem from the smell. From that point of view, the impact of the reform may be limited for trade marks on candles, for instance.
- Assessing the risk of confusion between trade marks, and risks of counterfeit. Assessing confusion and similarities in something as subjective as a smell could raise the issue of counterfeiting. Furthermore, conflicts between “traditional” and “non-traditional” trade marks would put us at risk in terms of confusion: e.g. how would we solve the potential conflict between the word mark “ROSE”, the olfactory mark “scent of rose” and the figurative mark representing a rose, all for the same products? Could the smell constitute a legally binding anteriority against a word mark? In our opinion, French courts may, in time, hold that position. The same question will arise in assessing and enforcing textures and tactile impressions as trade marks, which could from now on be registered.
It seems to us that the impact of this reform is, both a significant opportunity for new registrations and will also require, in time, precise regulating to ensure the monopoly and identity of each proprietor. Should there be any doubt, in the next few years, we should expect to see many trade marks combine, as a precaution, various kinds of registrations available.
- Directive 2008/95/CE of the European Parliament and of the Council of 22 October 2008 ;
- Directive (UE) 2015/2436 of the European Parliament and Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks;
- Regulation (UE) 2015/2424 of the European Parliament and of the Council of 16 December 2015.
- Decision of the Board of Appeal of the OHIM, 11 February 1999, “Smell of Fresh Cut Grass”;
- ECJ, 12 December 2002, case C- 273/00, Siekmann (Ralf) v Deutsches Patent- und Markenamt.
 sumitomo rubber co, GB 2001416
 unicorn products, GB 2000234
 Décision de la chambre des recours de l’OHMI, 10 février 1999
 CJCE, 12 décembre 2002, affaire C- 273/00, Siekmann (Ralf) c. Deutsches Patent- und Markenamt