Hologram trade marks and 22nd century brands

The UK's first multimedia motion mark was registered earlier this year, following, in the shadow of technological advances, a raft of changes to European trade mark laws. Toshiba's motion mark, inspired by origami, can be viewed here.

Historically, a key aspect of the legal definition of a UK, Irish or EU trade mark was that it was capable of being represented graphically, by use of images, lines or characters. Whilst it was possible to register different types of trade marks, such as sounds, colours, and shapes, they had to be illustrated graphically. The first trade mark ever registered in the UK - the Bass & Co. triangle logo - is, remarkably, still registered and can be viewed here.

The 2015 European Trade Mark Directive and corresponding changes to the EU Trade Mark Regulation removed the requirement for a mark to be represented graphically. The preamble to the Directive states that "a mark should be permitted to be represented in any appropriate form using generally available technology". The change took effect for EU trade marks in 2017, and for UK and Irish trade marks in January 2019. Applicants must still identify trade marks clearly and precisely but can now file motion, hologram, sound or multimedia trade marks using digital file formats.

Under the new regime, Google successfully registered UK and EU hologram marks (see here and here). Futbol Club Barcelona successfully registered an EU sound mark for a reading of the word "Barca", which can be heard here.

At the time of writing, the Irish Patents Office has not received any applications for non-traditional trade marks under the new regime.

Trade mark applications must still satisfy numerous requirements, including that a mark is capable of distinguishing the goods/services of one undertaking from those of another, but the removal of the graphical representation requirement opens the door to businesses keen to implement innovative branding strategies.

Last month, the European Union Intellectual Property Office (EUIPO) circulated a consultation on consumer perception of the new types of trade marks listed above, with a view to identifying general principles on formal requirements for granting their protection.

Comment

Disruption is the new normal and, to stay relevant and competitive, brands must embrace change. These changes to trade mark laws facilitate the registration of trade marks that are more suitable for the digital era, social media and the internet of things.

147 years on from trade mark number one in the UK, the progression from it to Toshiba's motion mark, which captures the essence of a 21^st century brand, is considerable. Further progress is inevitable, particularly given that the wording of the preamble to the Directive - "represented in any appropriate form using generally available technology" – is open-ended. This may leave scope for new technologies capable of representing, precisely, marks that fall outside of the categories of motion, hologram, sound or multimedia. EUIPO guidance states that such representation is not currently possible for taste, smell or texture.

We can only speculate about what a 22^nd century brand might look like but developments in technology are enabling agile challenger brands to compete at the highest level. Legacy brands must continue to transform if they are to maintain market dominance. A key challenge for brand owners is developing an awareness of what, amongst the ever-expanding field of branding, marketing and design, sets them apart from the crowd and can be monopolised as a trade mark.

For queries or further information on this topic, please contact Ciaran O'Shiel, senior associate, or a member of the Commercial & Technology team in A&L Goodbody Belfast.

Date published: 14 November 2019