Author: Dr. Giovanna Del Bene
In an increasingly competitive market saturated with trademarks, it has become challenging for companies to capture consumers’ attention. In this context, non-conventional trademarks represent a powerful marketing tool.
The term “non-conventional trademark” arises from the need to distinguish these new types of signs from traditional trademarks (such as word and figurative marks), which have long been recognized and regulated by law.
Currently, non-conventional trademarks refer to the following types of signs: Sound; Shape or Three-Dimensional; Position; Color; Movement; Patterned; Holographic; Multimedia; Olfactory; Taste; and Tactile. This category is considered “open” as the list is expected to grow, enriched by new types of signs as technology and marketing evolve, especially sensory marketing, which stimulates the human brain, evoking emotions and sensations linked to the brand.
Like all trademarks, these can be registered provided they: possess distinctiveness and can be represented in the Trademark Register. The current legislation allows signs to be represented in any appropriate form using generally available technology, provided the representation is clear, precise, self-contained, easily accessible, intelligible, durable, and objective.
In the context of convergence practices concerning trademarks, designs, and models, intellectual property offices within the European Intellectual Property Network have agreed on Common Practice 11 as of July 14, 2021, on trademarks, aiming to provide guidelines for examining formal requirements, obstacles to registration, and grounds for nullity concerning new types of trademarks, specifically sound, motion, multimedia, and holographic marks, along with new representation methods.
Regarding the representability of the sign and valid reproduction methods, the Common Practice states that if a sign clearly meets one of the definitions and representation requirements set forth by Common Practice, it should be classified as that specific type of trademark.
If the representation of a new type of trademark is accompanied by a description, this must align with the representation of the mark and should neither contradict nor broaden its scope. In cases where there is a conflict or discrepancy between the representation and the type and/or description of the trademark, the representation of the mark shall always prevail. Should verbal elements be included in the mark, these serve research purposes only and will not extend the scope of protection defined by its representation.
A trademark will be considered clear and precise if represented in an appropriate form, using generally available technology, provided that the sign can also be represented independently, is easily accessible, intelligible, durable, and objective, regardless of whether it carries a concept or not.
With regard to the minimum degree of distinctiveness required for new types of trademarks, these will generally be considered distinctive overall if they contain at least one inherently distinctive element.
If the mark features an unintelligible or unidentifiable element, as it does not convey a meaning or create connections to the products and/or services, provided it can be recognized by consumers as a source identifier, it will be considered distinctive.
Regarding the valid means of reproduction, new file formats (such as electronic video or audio files) should not be used to represent traditional trademarks in the register (e.g., a video file would not be acceptable for filing a word mark, even if it merely contains a static representation of the term itself). Instead, new file formats may be acceptable for more than one of the new types of trademarks, such as electronic video files, which are acceptable for representing motion, multimedia, and holographic marks, or image files as valid means to apply for sound or figurative trademarks.
For priority claims, a sign is considered identical to a trademark when it reproduces, without modifications or additions, all elements constituting the trademark, or when, considered as a whole, it contains differences so minor that they go unnoticed by the average consumer.
Two trademarks will be regarded as identical for the purposes of priority claims if the object of protection and the trademark match, regardless of format. Additionally, priority may be accepted if the second filing is of a different type than the trademark but has an identical object.
Thus, priority claims where one of the filings is represented in musical notation (e.g., JPEG) and the other in an audio file (e.g., MP3) will only be accepted if all elements in the audio file are indicated in the musical notation. Conversely, if any of these elements are missing, the trademarks are not identical, and the priority claim will be rejected.
Regarding the examination of obstacles to registration and/or grounds for nullity, the same general principles established by the Court of Justice apply to the comparison of sound, motion, multimedia, or holographic marks, as for traditional trademarks.
The overall assessment of the visual, phonetic, or conceptual similarity of trademarks must be based on the overall impression produced by the trademarks, considering the distinctive and dominant elements of the trademarks themselves, taking due account of the specific characteristics associated with the type of non-conventional trademark.
Sound trademarks encompass several elements that can be classified as follows: 1) sounds composed of verbal elements sung or spoken; 2) sounds composed of musical elements (such as melody, harmony, rhythm); 3) real sounds (such as a barking dog, thunder, ice cubes clinking, etc.); and 4) other sounds not falling within any of the previous categories.
A motion trademark includes combinations of different elements that can be classified as follows: 1) verbal elements; 2) figurative elements; and 3) the movement or transformation of verbal and/or figurative elements.
Multimedia trademarks comprise two categories of elements: 1) visual elements (graphically represented verbal elements, figurative elements, and the movement or transformation of verbal and/or figurative elements); and 2) sound elements (sung or spoken verbal elements, musical elements, real sounds, and other sounds).
Holographic trademarks may include three categories of elements: 1) verbal elements; 2) figurative elements; and 3) the holographic effect.
In a recent ruling of September 11, 2024 (Cases T361/23 to T364/23), the European Union General Court ruled on the distinctiveness of a color combination concerning position trademarks intended to mark agricultural machinery, concluding that the color combination lacked distinctiveness due to the frequent use of colors in connection with the claimed products and their intended use in the agricultural sector.
The Court confirmed that the jurisprudence related to color trademarks and color combination trademarks can be applied to position color trademarks, thereby affirming that the general principles regarding the assessment of the distinctiveness of color trademarks are also applicable when evaluating the distinctiveness of position trademarks constituted by the placement of a color combination.
To determine whether colors or color combinations are suitable for distinguishing an enterprise’s products or services from those of other enterprises, one must consider the type of products/services in question and the specifics of the relevant market.
Regarding the specific color choices of the examined trademark applications (comprising a combination of black, yellow, and red), the Court found them devoid of distinctiveness, as they consisted of a black and yellow strip within a basic rectangle commonly used as a reflector. Moreover, the applicant did not provide evidence of acquired distinctiveness through use of such signs.
In light of the foregoing, the Court concluded that the combination of the colors red, yellow, and black is merely a simple variant of color combinations used in the agricultural sector and also serves a functional purpose. Consequently, such trademarks did not allow the identification of the commercial origin of the goods in question, rendering them devoid of any distinctive character concerning the products they pertain to.
In this regard, the Court continues, to establish whether colors or color combinations are capable of distinguishing an enterprise’s products or services from those of others, it is essential to determine whether they can convey specific information, especially regarding the origin of a product or service. The EU General Court noted that, although colors are capable of conveying certain associations and evoking emotions, they possess minimal intrinsic ability to communicate specific information, particularly because they are commonly and widely used to advertise and market goods or services without any specific message (§34 et seq.).