Evolution And Revolution In Trademark Law : New Types Of Trademarks

 
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The development of new European regulations in trademark law, introduced in December 20151 by the « Trademark package », involves radical changes. The removal of the graphic representation requirement is certainly one of them.

Until then, signs which were capable of constituting a registered trademark were those capable of being represented graphically : in particular, words, including personal names, drawings, letters, numbers, the shape of goods or of their packaging, provided that some of the signs were capable of distinguishing the goods or services of one undertaking from those of other undertakings2. This list being non- exhaustive, it was admitted that sounds, odours or holograms could be registered as trademarks, provided they met the graphic representation criterion. This requirement imposed that such signs be capable of being represented graphically by means of images, lines or characters that were visually perceptible3.

Since the new European legislation, signs capable of constituting a registered trademark are those which are suitable to «be represented in the manner that enables competent authorities and the general public to clearly and precisely identify the object entitled to the protection conferred upon their holder»4. The graphic representation requirement is thus replaced by that of representation.

A sign can now be represented in any appropriate manner, using the technology available, and not necessarily graphically5. The only condition attached is that the representation shall provide sufficient guarantees in terms of clarity and precision6.

In practice, this means applicants now benefit from new opportunities. For the first time ever, they can register multimedia

marks, defined as those which combine image and sound, using MP4 files7. They can also register sound marks, motion marks or holograms (MP3 or MP4 files) without having to give any thought to their graphic representation. This progress stems from the need to modernise the trademark system and adapt it to the internet world8.

Multimedia, sound, motion and hologram marks that can be represented in electronic formats now constitute what is referred to as the « new types of trademarks » (or the new trademarks)9, as opposed to the ones we will here referred to, out of convenience, as 'old generation' trademarks (graphically represented): « traditional » trademarks (word and figurative) and « atypical » trademarks (in terms of colour, position or shape).

Since 1st October 2017, applicants have been able to register new trademarks as EU trademarks (EUTM) before the EUIPO. As soon as the Directive originated from the « Trademark package » will have been implemented by French legislature (due in 2019), these new trademarks will be registered before the French National Institute of Industrial Property (INPI).

According to the EUIPO's database, these new trademarks do not enjoy the same level of success: Sound marks...

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