Nowadays, one often hears that there is nothing that has not already been invented. This is both a true and a false statement.
When analysing the availability of a potential trademark by checking for prior rights, the fact that such rights often do exist makes the above statement seem true. Prior rights force people to examine potential constraints, to take a calculated risk, or on the contrary, to devise a strategy to get around them by buying the rights, seeking a coexistence agreement, initiating cancellation action for non-use. To sum it all up, it’s complicated.
On the other hand, the statement can also be false because people are constantly coming up with innovating concepts, new professions, or simply, new perspectives on a profession.
This desire for differentiation stretches across the globe and so does the need to protect it. In fact, differentiation is so difficult a task that those who are successful at it don’t want others following in their footsteps without having suffered the pains of the initial risk and of trial and error, nor do they wish to have their newly-acquired status watered down.
The issues around the protection of a concept (and the know-how that often goes along with it) are now more critical than ever before, and require an unparalleled acuity.
Inventors look towards industrial property, particularly trademark law, as a first option in their quest for elements that indicate the origin of goods and services.
How are new signs accommodated by current trademark laws? What are the inherent risks of this process? How can it be summarized?
What do trademarks « of the future » refer to?
Not all trademarks are verbal, figurative or semi-figurative!
The French Intellectual Property Code (CPI) actually allows for the registration of traditional trademarks such as scents, sounds, colours, three-dimensional shapes, slogans, holograms and motion signs.
Special requirements for special trademarks!
According to the CPI, the same validity criteria apply to all trademarks, no matter their type. They must be distinctive, available and must not run counter to public order and accepted standards of behaviour.
Although one can apply for these trademarks in principle, the jurisprudence shows that, in reality, many of the applications end up being rejected.
Why? Because trademark offices (such as the courts) consider that these trademarks go against public interest and that a monopoly exists when a sign is so well-known that the goods/services which it represents are obvious to the general public.
What difficulties do these trademark applicants encounter?
The trademark offices require these trademarks to be non-traditional or to show distinctiveness acquired through earlier (and proven) use.
Colour trademarks: These applications are frequently rejected and the application process has turned into a risky business. The courts are sometimes more open on the matter, as demonstrated by the ruling of the Rennes Court of Appeal on 27 April 2010 in the case of Store GIE/Store Nantais in which registration of the following sign was validated:
Three-dimensional trademarks: the lack of distinctiveness and the issue of technical function are the most frequent grounds for rejection. An example of this is the Paris High Court’s ruling on 16 March 2010 regarding Whirlpool’s trademark.
The acceptance of the application has become the exception rather than the rule. For example, Nestlé spent much time and effort before they were finally able to have the following Community trademark no. 2 632 529 registered:
One should note that the French National Industrial Property Institute (INPI) shows slightly more flexibility, as evidenced by the acceptance of the following trademarks:
no. 09 3661924 no. 09 625391 no. 09 3640509
The trademark offices also consider that certain trademark types (scents in particular) either lack the precision needed to identify the origin of goods and services, or are not accessible and durable enough. For instance, the following French applications were rejected:
no. 97698179 in Classes 3, 4, 42 no. 97658685 in Classes 3, 5, 16, 18, 24
as well as: no. 97705451 in Class 3
Sound marks on the other hand are, for the record, fairly uncomplicated and are generally accepted.
no. 93477635 in Class 38 no. 94 506 464 in Classes 7, 12, 37
Representation of a store’s interior: the position of French judges has for a long time been exemplified by the Sephora/Patchouli litigation in which a three-dimensional trademark representing the interior of the Sephora store had been cancelled due to a lack of precision (which did not spare Patchouli from prosecution on other grounds).
It is to be noted that Apple recently registered the trademark: in the United States with the following description: « the Apple store’s clear glass storefront surrounded by a panelled facade consisting of large, rectangular horizontal panels over the top of the glass front, and two narrower panels stacked on either side of the storefront, » and « cantilevered shelves below recessed display spaces along the side walls, and rectangular tables arranged in a line in the middle of the store parallel to the walls and extending from the storefront to the back of the store » and this mark had been used on an international scale (application no. 1060320)! Apple’s registration procedure ought to be replicated in other countries…
Yet, the real trademarks « of the future » are the ones that involve movement in the form of animated sequences.
The particularity of motion marks
The OHIM set the tone back in 2010 when it registered the following motion mark from Sony under no. 8 581 977:
The test laid down by the community courts aims to determine whether an average person with normal levels of perception and intelligence would be able or unable to ascertain the precise subject matter of the trademark by consulting the Community Register, without stretching their imagination or intellect.
It is amazing to see how drastically the description of this trademark had changed from being initially rejected to being registered in the end (full details cannot be provided here due to space limitations).
It should be noted that the Office gave consideration to the precedent set by the following registered trademarks:
CTM no. 8 207 532 CTM no. 8 553 133
Registered Community trademarks containing simple or minimal movements carry rather short descriptions.
The description of the Community trademark no. 5881628, with the word « direkt » displayed in motion simply indicates that « the subject of the trademark is the cyclic movement represented by the sequence of images. These images show extracts of a continuous circular movement ».
CTM no. 5881628
Similarly, the Community trademark no. 8679748 is described as an « animated sequence of 25 images representing the EyePet character hiding behind the word EyePet while slowly stretching his tail out, uncurling it and swinging it from right to left »
CTM no. 8679748
The Community trademark no. 5952999 provides yet another illustration: « the trademark consists of a moving image showing a hand with a coin, placed between the index finger and the thumb, being dipped into a liquid from which it is then extracted ». No. 8361727 reads: « the sign consists of a series of five (5) images showing a bottle containing a washing machine door from which water gushes out in a right-to-left flow ».
CTM no. 5952999
CTM No. 8361727
The lengthier descriptions have more rarely been adopted while the movement involved was quite simple and could easily be perceived just by viewing the vignettes that make up the trademark (as in the below example of Community trademark no. 8195992).
An MP4 file and a flipbook, such as those submitted to the OHIM by Sony in the case below, could serve to illustrate the trademark’s movement. However, they cannot replace the necessary combination of a representation and a description.
CTM No. 8195992
For these trademarks « of the future » the challenge lies not in applying for registration, but rather in actually obtaining it. We have seen a great number of rejections as well as positive outcomes that sometimes require a herculean effort.
A rejection means that the sign cannot be monopolised. Sometimes the Offices even go so far as to explicitly state that the sign must remain available to all competitors. So what is the solution?
Arbitration is a must!
It is tempting to apply for a non-traditional sign in order to better protect one’s differentiation. However, a registration refusal can be damaging.
It is therefore wiser to protect a concept using a combination of tactics which are not restricted to applications for exclusive rights.
As a start, an exhaustive list of differentiation points should be drawn up. Each point should then be examined in terms of its possible legal implications, advantages and disadvantages, and possible competitors. The strongest points should be highlighted and at the end, one should arrive at a framework for the kind of protection desired.
After careful study of French jurisprudence, copyright infringement action is often a huge gamble; if the judge considers it appropriate to retain originality, the bet is won.
However, when the judge delivers a ruling years after the creation of a concept in which he considers that it does not greatly differ that of the competitors, he rejects the claim for originality. In such a case, he would dismiss not only the copyright infringement case but also the case of unfair competition, which is where the real danger lies.
We therefore consider it preferable to:
- Seek out protection of IP rights that are not too difficult to acquire
- Supplement this protection by benefitting from a well-informed and astute reflection on the other facets of the concept
- Pursue copyright infringement action only in a highly standardised context (and opt for multiple actions: other IP rights/unfair competition).