This year has seen some interesting and exciting changes to trademark law in Europe that opens up new possibilities for branding globally if adopted internationally, including in high-tech economies such as New Zealand.
It is now possible to register animated and audio-animated trademarks, via multimedia files.
What is a Trademark?
A trademark is a badge-of-origin that enables consumers to identify the source from which certain goods and services come from. To qualify as a registered trademark, the mark must (or used to) be:
- A sign (any message capable of perception by the senses, that can constitute an indication for the consumer)
- Capable of graphical representation (by images, lines or characters, that is clear, precise, self-contained, easily accessible, intelligible, durable and objective)
- That distinguishes the undertakings of one business from those of another business, such that the average consumer is unlikely to be confused
Changes to EU Trademark Law
EU Directive No. 2015/2436 (16th December 2015) entered into force on 14th January 2019. It brought about a number of changes to EU trademark law, including:
- The removal of the requirement for graphical representation
- The acceptance of multimedia trademarks
Rather than having to be represented graphically, EU trademark registrations now have a relatively less stringent requirement of sufficient clarity, as well as the requirement of being capable of publication in the Official Gazette.
Multimedia trademarks may be represented at registration in audio-visual files, such as MP3 or MP4 format.
There remains the requirement for marks to have distinctive character, and to be presented in a way that enables the consumer to clearly identify and understand the mark.
These changes improve the opportunity and potential to register animated marks, or those incorporating both motion and sound. This opens the door for a new breed of trademark relevant for the 21st century.
Where have such marks already been registered?
There are at least a couple of examples of multimedia trademarks that have already been registered.
On 1st March 2019, intellectual property consulting firm Novagraaf registered this multimedia mark in Benelux (Belgium, Netherlands, and Luxembourg).
A couple of months later, on 3rd May 2019, the UK Intellectual Property Office registered its first moving multimedia trademark to multinational conglomerate Toshiba.
However, since the World Intellectual Property Organisation and other national offices do not yet accept multimedia formats, such marks will still need to be capable of graphical representation if they are to be registered in other jurisdictions.
What Are the Implications?
This change paves the way for the evolution of branding in many industries including IT, music, film and marketing, amongst others.
The acceptance of the use of new technologies for trademarks and brand protection offers possibilities for companies to distinguish themselves from their competitors in fresh and exciting ways.
Is It Possible to Register Multimedia Trademarks in New Zealand?
Research suggests that the registration of multimedia trademarks is not yet possible in New Zealand. The Trade Marks Act 2002 (as of 30th December 2018) defines a trade mark as “any sign capable of being represented graphically”, and so the graphical representation requirement appears to remain.
With Aotearoa being a global influencer in hi-tech innovation, an amendment to the Act would enable New Zealand companies to lead with a new form of branding suitable for the digital world and the 21st century.
European Union Intellectual Property Office. (2017, September 22). “Trade mark definition”. Retrieved July 04, 2019, from: https://euipo.europa.eu/ohimportal/en/trade-mark-definition
New Zealand Trade Marks Act 2002, s5. Retrieved June 30, 2019, from: http://legislation.govt.nz/act/public/2002/0049/57.0/DLM164249.html
NOVAGRAAF®. (2019, March 01). Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam Zuidoost, Nederland. Retrieved July 04, 2019, from: https://register.boip.int/trademarks/search/bynumber/perform.do?markNumber=1391252&markNumberType=APP
NOVAGRAAF®. (2019, March 01). Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam Zuidoost, Nederland. Retrieved July 04, 2019, from: https://www.novagraaf.com/sites/default/files/NOVAGRAAF_LOGO.mp4
Novagraaf, (2019, March 05). “Protecting multimedia trademarks: will your business be next?”. Retrieved July 04, 2019, from: https://www.novagraaf.com/en/insights/protecting-multimedia-trademarks-will-your-business-be-next
Official Journal of the European Union. (2015, December 16). “Directive (EU) 2015/2436 of The European Parliament and of The Council”. Retrieved July 02, 2019, from: https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri=CELEX:32015L2436&rid=5
Pompe A. (2017, October 25). “Multimedia trademarks open entirely new possibilities”. Retrieved July 02, 2019, from: https://newtech.law/en/multimedia-trademarks-open-entirely-new-possibilities/
Porro MS. (2019, February 25). “8 Keys to Understand the New European Trademark Directive”. Retrieved July 02, 2019, from: https://www.moellerip.com/8-keys-to-understand-the-new-european-trademark-directive/
Sieckmann v Deutsches Patent- und Markenamt  3 WLR 424,  All ER (EC) 253,  1 CMLR 40,  RPC 38,  Ch 487,  EUECJ C-273/00, Case C-273/00
TOSHIBA®. (2019, May 03). Kabushiki Kaisha Toshiba, Tokyo, Japan. Retrieved June 30, 2019, from: https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00003375593
TOSHIBA®. (2019, May 03). Kabushiki Kaisha Toshiba, Tokyo, Japan. Retrieved June 30, 2019, from: https://www.ipo.gov.uk/trademark/image/GB50001100003375593.mp4
United Kingdom Trade Marks Act 1994, s1. Retrieved June 30, 2019, from: https://www.legislation.gov.uk/ukpga/1994/26/section/1
Wikipedia. (2017, June 03). “Novagraaf”. Retrieved July 04, 2019, from: https://fr.wikipedia.org/wiki/Novagraaf
Wikipedia. (2019, July 02). “Toshiba”. Retrieved July 04, 2019, from: https://en.wikipedia.org/wiki/Toshiba
Wikipedia. (2019, June 22). “Trademark”. Retrieved July 02, 2019, from: https://en.wikipedia.org/wiki/Trademark
World Intellectual Property Review. (2019, June 26). “UKIPO celebrates British IP Day with first multimedia mark”. Retrieved June 30, 2019, from: https://www.worldipreview.com/news/ukipo-celebrates-british-ip-day-with-multimedia-mark-first-18260