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A new future for sounds and scents?
Trademark law has a long history of high-profile cases. The constantly innovating digital society keeps providing new opportunities. The European agenda was completed with a new task in 2014: intensifying and modernizing the EU Intellectual Property framework. The new EU Trademark Regulation and Trademarks Directive entered into force on 23 March 2016. The new regulations should make the current trademark regulation more effective, efficient and consistent. How much will the new regulation affect the possibility to register sound and scent trademarks?
Shieldmark- and Sieckmann-judgments
The requirement that a sign must be capable of being represented 'graphically' does no longer apply, which is a substantial change. It will now be much easier to register specific tyoes of signs as a trademark. You could think of sounds and scents for example. Previously trademark registrations were only possible under certain circumstances. The European Court of Justice decided in the Shieldmark-case that the representation of the melody formed by the notes (graphically) transcribed on a musical stave is sufficient for a trademark registration. A sound mark can be registered as a trademark under the condition that 'the sign is represented by a stave divided into measures and showing, in particular, a clef, musical notes and rests whose form indicates the relative value and, where necessary, accidentals'.
The trademark office Shieldmark obtained trademark protection for the jingle 'Für Elise', written by composer Beethoven. The jingle was used in a radio advertising campaign. Many years ago, an attempt was made to register the Tarzan-yell as a sound trademark. The application for registration was filed in the form of a sonogram combined with a description of the sound in words. The EUIPO – then OHIM – considered the application as insufficient. Other futile attempts are the registration of the sound of a Harley Davidson motorcycle (filed by Harley Davidson) and the sound of a lion's roar heard at the beginning of MGM's feature films.
The registration of scent as trademarks was hopeless. As decided by the European Court in the Sieckmann-case. Mr. Sieckmann filed an olfactory trademark of the pure chemical substance methyl cinnamate. With the application Sieckmann also submitted an smell sample of the sign in a container. Furthermore, the scent was usually described as 'balsamically fruity with a slight hint of cinnamon'. The European court ruled that the description was not sufficiently clear, precise and objective.
Do the new EU trademark regulations really open the way for non-conventional trademarks, such as sounds and scents?
The requirement that a sign may be described sufficiently precise and clear, which has been formulated by the European Court, will still remain. However, the new requirement is that the sign has to be clear, precise, self-contained, easily accessible, intelligible, durable, unequivocal and objective so that it can be precisely identified. The registration method of trademarks will be extended if it is described based on the technologies that are widely available. For example mp3-files. this offers a solution for electronic music, because the sound of such musical works is difficult to capture in a stave.
The question that is raised after removal of the requirement that a trademark must be capable of being represented graphically: is it possible for a company to file any tune to distinguish its goods and services? The copyrights of the composition 'Für Elise' were already expired. As the piece of music 'Für Elise' was dedicated to the public domain, Shieldmark could register the first nine notes without a permission. What if a tune is still copyright protected? Obviously a company can benefit from a famous song to use it as a registered trademark for its goods and services. In case of copyright protected works a license or a permission of the author must be obtained.
Moreover, when does a certain scent - which is even covered by copyright protection - reach the threshold of distinctiveness that enables it to be protected as a trademark? Case law suggests that the assessment of the distinctive character of the sign cannot be assessed abstractly but must be performed concretely,taking into account all the circumstances of the particular case. Distinctiveness is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness. It is enough that the trademark enables the relevant public to identify the origin of the goods or services protected thereby and to distinguish them from those of other parties. In addition to this, a trademark owner (who registered a scent sample) could change the chemical composition afterwards. Does such an application comply with the requirement of sustainability?
The new EU trademark regulation makes it possible to register scents as trademarks. This raises the following question: How could a company check existing trademarks held by other parties (in the registers)? Verifying registered trademarks in the form of colours, logo's and shapes is relatively easy. It seems that it is possible to register a scent - due to the expired requirement that a trademark must be capable of being represented graphically – together with an smell sampleThe trademark registers will be modified to the new regulations. It is to be expected that sound and scent trademarks could be registered from October 2017.
Can sounds and scents really be protected under new EU law?
It seems that the new European trademark regulation raises interesting questions for the trademark offices and the courts. The answers to these questions will probably be more interesting in the future.
Witten by Denise Brouwer