An overview of conditions for registration and scope of protection for various trade mark categories under comparison from the perspective of the CTMR The Directive to approximate the laws relating to trade marks (TMD) does not give a standard provision or definition of the various forms of trade mark, binding for all Member States. On the other hand, it is clear from the seventh recital of theTMD that the conditions for obtaining and continuing to hold a trade mark should generally be the same in all the Member States1. Whereas definite interpretations of the requirements for registration and the scope of protection are widely recognised, there is disagreement in other areas. It is true that the TMD and the CTMR include a wide variety of possible forms of trade mark and mention as examples, in Article 2 TMD and Article 4 CTMR, words, including personal names, designs, letters, numerals and the shape of goods or of their packaging. Unlike non-registered trade marks, for trade marks registered at national level and for Community trade marks, it is additionally provided that the trade marks must be capable of being represented graphically. However, the question as to whether the graphic representation is a precondition for granting a date of filing (Article 27 CTMR)2 or an absolute ground for refusal (Article 7(1)(a) CTMR) is not settled in the TMD. The TMD and CTMR do not contain any definitions of trade mark categories. These can only be found in a vast array of implementing regulations, internal guidelines of national and international offices and case-law. The CTM application form currently provides for the following categories of trade mark: word marks, figurative marks, three-dimensional marks, colours per se, sound marks and other marks. But are these categories still up-to-date or at all helpful? The subject is of great practical significance and requires harmonisation at Community level. A. Words/numerals/letters/signs 1. Definition Word marks are already mentioned in Article 4 CTMR. Pursuant to Rule 3 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (CTMIR) (representation of the mark), a ‘word mark’ may be defined as a word for which the applicant does not claim any special graphic representation or colour. Rule 3 CTMIR further refers to marks consisting of numerals, letters and signs for which the applicant does not claim any special graphic representation or colour. 1 Judgment of the Court of Justice of 27 November 2003 in Case C-283/01 Shield Mark BV v Joost Kist h.o.d.n. Memex, ‘Musical notation’, paragraph 39, [2003] ECR I-14313 2 Decision of the Boards of Appeal of 5 December 2001 in Case R 711/1999-3 –Smell of raspberries 2. Representability Criteria Although, by nature, pure word marks do not have a special graphic representation, word marks must be clear, precise, self-contained, easily accessible and intelligible in the register, durable with regard to the possibility of renewal, and objective in order to avoid any element of subjectivity in the process of identification and perception. The identification of a mark has the purpose of defining it in order to determine the precise subject of the protection afforded by the registered mark to its proprietor. Next, the entry of the mark in a public register has the aim of making it accessible to the competent authorities and the public, particularly to economic operators. On the one hand, the competent authorities must know with clarity and precision the nature of the signs of which a mark consists in order to be able to fulfil their obligations in relation to the prior examination of registration applications and to the publication and maintenance of an appropriate and precise register of trade marks. On the other hand, economic operators must, with clarity and precision, be able to find out about registrations or applications for registration made by their current or potential competitors and thus to receive relevant information about the rights of third parties.3 Neutralisation of special graphic elements If a word mark is applied for, it must be reproduced in the application in normal script, for example typed on a typewriter or computer or handwritten. The applicant then knows that the Office will transfer the trade mark to its database in a particular typeface (Times Roman) and a particular font size (12). Letters, numerals and signs are also reproduced in a correspondingly neutral manner. Words, letters, numerals or signs are entered in the order in which they are applied for. Trade marks in the current 23 official languages of the European Union may be filed not only in the Latin alphabet with a series of special national characters, but may also be written in the Greek or Bulgarian alphabet. However, Russian, Arabic, Japanese or Chinese Community trade marks are also applied for, which represents a normal development given the large number of immigrants in the Common Market of the European Union and the globalisation of the economy with Europe as a leading world exporter. These are also in principle clear, precise, self-contained, easily accessible in the register, intelligible and objective, provided sufficient linguistic knowledge is held by the public or they turn to a dictionary for assistance. 3 Judgment of the Court of Justice of 12 December 2002 in Case C-273/00, Ralf Sieckmann v Deutsches Patent- und Markenamt, ‘Methyl cinnamate’, [2002] ECR I-11737. 2 German Bier Parfüm English beer perfume Swedish öl parfym Finnish olut hayuvesi Bulgarian Бира Парфюм Greek Μπύρα άρωµα Latin cervisia unguentum Hebrew בירה בושם Turkish bira parfüm Russian Пиво Парфюмированная вода Arabic ﺑِﻴﺮَة ﻋﻄْﺮ ِ Chinese The question as to whether word marks may be applied for and, in particular, registered and searched for in the electronic register in non-European alphabets initially only appears to be purely technical. Classifying a mark as a word mark or figurative mark is not a determining factor for the purposes of the examination of absolute or relative grounds for refusal or, in particular, for the relevant public’s understanding of these words. The absolute grounds for refusal must be examined with regard to the public interests which are protected by the respective absolute grounds for refusal. Restricting the public interests to the 23 official languages does not appear to be justified, especially since some official languages of Member States in the European Union are spoken less than, for example, Arabic, Russian or Chinese. Consideration must also be given to the export economy. Errors in the examination procedure leading to registration may be corrected later in invalidity proceedings. It therefore appears correct that the following trade mark was understood, even if it was written in Arabic4: Lower and upper case While the typeface, size, colour and arrangement in several lines are officially neutralised in the case of a word mark, this does not apply to upper and lower casing. Rule 3 CTMIR 4 Bin Ladin – Refusal on the basis of absolute grounds for refusal, contrary to public policy and accepted principles of morality. Decision of the Boards of Appeal of 29 September 2004 in Case R 177/2004-2, not definitive (appeal to the Court of First Instance of the European Communities T-0488/04). 3 expressly permits the use of small letters and capital letters and it is established that these shall be followed accordingly in publications of the mark and in the registration by the Office. In this respect, even word marks have a special graphic design. It should be emphasised that the use of upper and lower case can influence pronunciation, the visual impression and the understanding of the meaning of a mark. The usual or unusual mixture of upper and lower case is particularly popular in this case. Some examples of this are: BioID, LEADIng., AIRail, BioGeneriX (see also BlumenTopfErde/BlumentoPferde). Certainty of word marks and scope of protection It should not be overlooked that in the case of word marks, in the Community trade mark system, a certain degree of subjectivity cannot be avoided in the perception process. The pronunciation of a word mark may be debatable even within the same Member State, especially if it is a foreign term or a purely fanciful term. It was therefore debatable how the German consumer would pronounce the following signs: - In the context of a trade mark comparison with ‘Bass’: PASH like Bas5 or like Päsch6. - In the context of a trade mark comparison with a figurative mark ‘Sir’: ZIRH - like Zir or like the English word 'Sir'. Pronunciation and understanding vary even more from Member State to Member State and from consumer group to consumer group. In practice, word marks usually ‘enjoy protection in all customary styles of writing’, regardless of the typeface and whether they are written in upper or lower case. This cannot however be inferred from Rule 3 CTMIR. This currently only provides for a restricted neutralisation of a word mark in the case of publication and registration. In the context of genuine use of a mark, it is sufficient if a trade mark is used in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered (Article 15 CTMR). However, in the case of a word mark, that means that the addition of special graphic design elements, words or figurative elements can lead to non-use of the word mark if it affects the distinctive character of the mark. In addition, trade mark protection does not shift to the used mark. Instead, the registered version of the word mark remains the reference in the examination of trade mark similarity.7 In this respect, the version of the mark in the register is given priority over the version used. Absolute protection against other trade marks only exists in the case of identical trade marks and identical goods or services. According to the case-law of the Court of Justice of 5 See the decision of the Boards of Appeal of 12 September 2001 in Case R 740 / 2000-3 – Bass/Pash. See the judgment of the Court of First Instance of 14 October 2003 in Case T-292/01 Phillips-Van Heusen Corp. v OHIM, ‘Bass’, [2003] ECR II-4335. 7 Judgment of the Court of First Instance of 12 January 2006 in Case T-147/03 Devinlec Développement innovation Leclerc SA v OHIM, ‘Quantum’, [2006] ECR II-11. 6 4 the European Communities8 regarding identity in infringement proceedings pursuant to Article 5(1)(a) of the Trade Mark Directive (corresponding to Article 9(1)(a) and Article 8(1)(a) CTMR), the definition of the term ‘identity’ implied that the signs should be identical and no elements should be added or taken away. With reference to the function of a trade mark as an indication of origin, account should not, however, be taken of the trade mark examiner, but rather of the reasonably well-informed and reasonably observant and circumspect average consumer, whose attention may vary according to the type of goods or services in question and who compares the trade marks from memory. Minor differences between the sign and the trade mark may escape such a consumer's notice. Differences that are so small that they may be missed by an average consumer do not therefore affect the identity of otherwise matching signs. If these differences do not escape the notice of the relevant consumer, then, at most, similarity between the trade marks can be assumed. The following principle applies in the scope of Article 8(1)(b) CTMR: the more similar the trade marks, the greater the distance must be between the goods or services. Standard typefaces are generally regarded by the relevant consumer as identical in the visual impression made. This does not, however, apply to all typefaces available in Microsoft Word, as shown by the following examples. Identity or similarity? (Arial) Identity or similarity? (Times Roman) Identity or similarity? (Times Roman bold italics) Identity or similarity? (Courrier) Identity or similarity? (Benguiat Bk BT) Identity or Similarity? (BernhardFashion BT) Identity or Similarity? (English111 Vivace BT) Identity or Similarity? (Lithograph) Identity or similarity? (Staccato222 BT) Identity or similarity? (FuturaBlack BT) (Gothic script) Therefore the rule of thumb should actually be that the more similar the trade marks, the greater the likelihood of confusion. In the context of the examination of similarity, a particular typeface may well be significant. Cor 8 Judgment of the Court of Justice of 20 March 2003 in Case C-291/00 LTJ Diffusion SA v Sadas Vertbaudet SA, ‘Arthur et Félicie’, [2003] ECR I-2799. 5 (Trade mark applied for) (German word/figurative mark) (D in normal Gothic script) The Court of First Instance9 found that the word mark ‘Cor’ and the figurative mark ‘Dor’ were different. Visually, the trade marks shared the letters ‘o’ and ‘r’ [despite the different typeface]. The respective initial letters were different, however, and it was emphasised that the ‘D’ was a particularly decorative letter which was not the same as the ‘D’ in Gothic script. The signs were therefore different overall. Conceptually, a meaning can be given just from the use of upper and lower case. In the case of BioID, the descriptive meaning emerged (differently to ‘bioid’) precisely from the use of upper and lower case. The trade mark therefore had to be refused on the basis of absolute grounds for refusal10. In addition, the emphasis of a word combination in the context of a word mark in which the separation of the elements is emphasised by a capital letter within the word is generally customary and does not lead to registrability of an otherwise descriptive indication. Unusual use of upper and lower case can assist in the registration of a word mark if it changes the meaning for the relevant consumer. In the case of LEADIng., a Board of Appeal decided that a play on words with the abbreviation ‘Ing.’ of the German word ‘Ingenieur’ [engineer] may in principle lead to registration, but the Board ultimately found that, in particular, the English-speaking public, which is the relevant one, would not understand the play on words, and would instead merely perceive the mark as ‘Leading’. The trade mark was refused as a descriptive indication for planning services11. The letter combination PCS is not understood as a plurality of personal computers, first of all since, in the English language, the word ‘Computer’ does not have a plural ‘s’ or a plural form would be contained in the abbreviation, and also since, when the abbreviation stands alone, the plural ‘s’ would usually be written in lower case (PCs). There are, therefore, no absolute grounds for refusal (such as that of the descriptive indication). Neither is its distinctive character for computers diminished because of a descriptive echo12. On the other hand, the word marks PCS and PCs (subject to registration) would also not be identical within the meaning of Article 8(1)(a) CTMR. The two signs are visually, aurally and conceptually different. 9 Judgment of the Court of First Instance of 23 May 2007 in Case T-342/05 Henkel KgaA v OHIM, ‘Cor’, [2007], not yet published. The opposition was based on this German trade mark which had been registered as a ‘word/figurative mark’ in 1935 under No 481 250, inter alia, for goods of class 3 – ‘Cleaning and washing agents for household and kitchen utensils and for bottles, bottle-, pot- and barrel-cleaning agents, window-cleaning agents, fat-solubilising agents, products for removing oil from and cleaning porcelain’. 10 Judgment of the Court of First Instance of 5 December 2002 in Case T-91/01 BioID AG v OHIM, ‘BioID’, [2002] ECR II-5159; judgment of the Court of Justice of 15 September 2005 in Case C-37/03 P BioID AG v OHIM, ‘BioID’, [2005] ECR I-7975. 11 Decision of the Boards of Appeal of 2 June 2006 in Case R 897/2005-1 – LeadIng. (figurative mark). 12 Decision of the Boards of Appeal of 9 February 2005 in Case R 248/2004-2 – T-PCS / PCS 6 Description In addition to the direct reproduction of the Community trade mark, the application may also contain a description (Rule 3(3) CTMIR). This is entered in the Register and published (Rule 84(2)(f) CTMIR). This is not the case in all Member States, which appears to be a problem, although, within the context of certainty of the registered trade mark, the description can be particularly important. The European Court of Justice accepts in principle a description even as the graphic representation of a trade mark pursuant to Article 4 CTMR. In the case of word marks, a description (for example of the meaning or the pronunciation) is rare. The boundaries as regards figurative marks or sound marks therefore become hazy. Disclaimer Where the trade mark contains an element which is not distinctive, the applicant may declare that he disclaims any exclusive right to such element (Article 38(2) CTMR). Such a disclaimer is rarely required by examiners in practice, but is occasionally spontaneously declared to the Office. The conditions for a disclaimer are firstly that the disclaimer should not relate to the entire trade mark, but only to a part thereof, and secondly that this part should not be distinctive per se. A trade mark for which the applicant relinquishes a right altogether should however not be registered. The disclaimer has a uniform effect for the entire European Union, even in countries where the element would be distinctive. In any procedure regarding likelihood of confusion, the similarity of trade marks could not be established on the basis of this element. However, even without a formal disclaimer, in the context of the similarity of trade marks, it depends on whether or not a certain element may be monopolised. In the Chiemsee judgment, the European Court of Justice found in principle that there were public interests why a particular sign should not be reserved to one undertaking alone as a trade mark. This applied both to the sign on its own as well as in combination with other elements. Signs which may not be reserved to one undertaking alone include descriptive indications (cf. Article 7(1)(c) CTMR) or non-distinctive elements (cf. Article 7(1)(b) CTMR), but also to sign elements in which there are other public interests, for example, national emblems or of indications of geographical origin. B. Figurative marks 1. Definition In contrast to the word mark, a ‘figurative mark’ is a trade mark for which the applicant claims a special graphic representation or colour. In contrast to other forms of trade mark, it must also be two-dimensional and static, and may not merely consist of a colour or a colour combination. Otherwise, there are no distinct boundaries. There is certainly no 7 positive legal definition in the regulations on the CTM. In OHIM terminology, the term ‘figurative mark’ comprises stylised word marks or word/figurative marks. 2. Graphic representability Harmonised Community law indicates, in particular in Article 4 CTMR, that the trade mark applied for must be capable of being represented graphically (see paragraph # above). CTM procedural law states that, for the granting of a filing date, a representation of the trade mark must be filed (Article 27 CTMR). For all trade marks that were applied for not only as a simple word, numeral, letter or sign but for which a special graphic representation or colour is claimed, a separate reproduction must be filed on a separate sheet of paper (Rule 3(2) CTMIR). Figurative marks are scanned as Community trade marks and added to the electronic register. Figurative marks are also increasingly being submitted as an electronic file by way of an electronic application. Unlike word marks, figurative marks are not neutralised, except as regards size : ‘What you see (in the application) is what you get (in the registration)’. Where registration in colour is applied for, the colour must be indicated and the trade mark reproduced in colour (Rule 3(5) CTMIR). It follows from this that no colour should be indicated for a black and white trade mark and the trade mark should be reproduced in black and white. Although the European Court of Justice decided that pure colour marks are only represented graphically in a permanent and sufficient manner for registration purposes when they are given an international colour code, Rule 3(5) CTMIR merely states that an indication of colour is required. In practice this means the simple colour indication blue, red, green, grey, etc. This does not appear to be a problem either, as the technology of the colour scanner, the screen, the software and the printer can be relied on. The question of the form in which a trade mark may be applied for is not the same as the effect it has on the relevant public. A rule is often applied according to which black and white figurative marks ‘enjoy protection in all colours’, especially if it is obvious that the black and white representation is of a figurative mark in colour, as revealed by the different shades of black and white. Identity between trade marks cannot obviously be assumed on this basis, however. Whether genuine use of a mark has occurred and trade mark similarity must be examined on a case by case basis. With figurative marks there are also situations in which the principles of word marks are to be applied: the more a figurative mark resembles a word mark, the more likely it is that the graphic elements will be ignored. In the following cases, the application was refused on the basis of absolute grounds for refusal, even though figurative marks were involved: 8 (electronica image above)13 14 It should however be examined in each individual case how the graphic elements are perceived by the relevant consumer. The Boards of Appeal15 neglected to do this when it equated the following figurative mark with a word mark consisting of a letter (see paragraph # above): A further description of the trade mark applied for is optional and will be published. A description may be recommended in order, for example, to draw attention to certain details, such as word elements. The description may also contain a particular indication of size. The colour indication or a further description may not stand in contradiction to the figurative representation (therefore, for example, a blue and white emblem may not be claimed in red and gold or black and white). This calls for the principle of clarity of the register. Where there is any doubt, it is however the filed reproduction which is decisive. Furthermore, where the trade mark contains an element which is not distinctive, the applicant may declare that he disclaims any exclusive right to the component (Disclaimer, Article 38(2) CTMR).The disclaimer concerns equally non-distinctive word marks and figurative marks. It is also the case here that elements which may not be monopolised should not be entitled to legal protection (see paragraph # above). 13 Judgment of the Court of First Instance of 5 December 2000 in Case T-32/00, Messe München GmbH v OHIM, ‘Electronica’, [2000] ECR II-3829. 14 Case T-398/04, Tabs (not final). 15 CTM 2927788; decision of the Boards of Appeal of 1 September 2005 in Case R 559/2004-1 – I; judgment of the Court of First Instance of 13 June 2007 in Case T-441/05 IVG Immobilien AG v OHIM, ‘I’, [2007], not yet published. 9 C. Three-dimensional marks 1. Definition A ‘three-dimensional mark’ is a trade mark with a physical, three-dimensional shape. 2. Graphic representability Three-dimensional marks are currently reproduced by means of a two-dimensional photograph or graphic representation. A maximum of six representations must suffice in order, where necessary, to represent a trade mark from the front, rear, right, left, bottom, top, inside and outside (Rule 3(3) CTMIR). The images are scanned as Community trade marks and entered in the electronic register. Images are also increasingly being submitted as electronic files by way of an electronic application. It should only be a matter of time, however, before it is also possible to enter a three-dimensional representation in the register which can be moved or rotated by the observer himself by means of new technologies. Where registration in colour is applied for, it likewise follows that the colour must be indicated and the reproduction must be filed in colour. A three-dimensional mark may, just like a figurative mark, contain a word. It is possible to file a description (for example of certain special features which are not easily discernible, see word element on torches) and to file a disclaimer. 206789 3. Scope of protection According to case-law, in the case of three-dimensional marks, product shape marks or packaging shape marks, it is the rule in the case-law that the relevant consumer pays less attention to the shape than to a word or a figurative element, especially in the case of marks consisting of the shape of the product or the packaging. However, this does not 10 mean that this is always the case. The consumer can at least learn that a particular shape corresponds to a particular product, regardless of variations in its final presentation. Therefore, as different word or figurative marks may be distinguished on packaging (umbrella mark, product mark, etc.), it must be determined whether the relevant consumer regards a shape per se as an indication of origin or whether he only recognises a shape in connection with certain colours, words or images. The Court of Justice thus confirmed that a shape of bottle without figurative elements is not recognised as a Corona bottle and confirmed the refusal of acquired distinctive character. 003691681 001000140 Cases in which a mere shape is granted distinctive character are rare. It is logical in this case to apply the Thompson Life doctrine if a particular shape is reproduced by a competitor with the word element being the only distinction. This was not adopted, however, in the case of two opposing tubes for coloured chocolate discs.16 D. Colour marks 1. Definition Colour marks are not defined in the regulation either. They are one of the ‘other’ forms of trade mark other than word marks. Colour marks are different to figurative marks (including word/figurative marks) or three-dimensional marks because they lack a special graphic representation. A figurative mark in colour is therefore different to a colour mark. However there are no distinct boundaries here if, for example, a particular colour sample is applied for without a lateral limitation. 16 Decisions of the Boards of Appeal of 30 August 2004 in Case R 506/2003-2 – M&M´s MINIS tube with label / Smarties tube shape 11 2. Graphic representability Rule 3(2) CTMIR states that a reproduction is required, and Rule 3(5) CTMIR stipulates the indication of the colour. The Court of Justice found in a preliminary ruling procedure that a colour sample on paper is not permanent and may change over time (see paragraph # above). A description in words was not precise enough17, although the indication of a colour code was18, such as, for example, the indication of the colour code HKS7 in the KWS Saat proceedings19. The reference to colour codes can be problematic if they are drawn up by different private organisations for non-registration purposes, such as for the classification of colours for sales purposes. Therefore not all colour shades and effects are recorded precisely, the code allocations may change over time or be abandoned completely and the codes are not easily accessible to the public. The so-called pure colour mark or colour per se currently means an application for an individual colour per se which is intended to be used independently of its shape or graphics. The European Court of Justice does not consider an abstract colour combination mark, in which the description revealed that a particular shade of blue (RAL 5015/HKS 47) and a particular shade of yellow (RAL 1016/HKS 3) were applied for and which ‘are used in any conceivable form, in particular for packaging and labels’, to be sufficiently precise. If, however, the distribution and the ratio of the colours are precisely indicated in the description, the trade mark appears to be eligible for registration. 17 Decision of the Boards of Appeal of 12 February 1998 in Case R-0007/1997-3 - Orange Judgment of the Court of Justice of 6 May 2003 in Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau, ‘Orange’, paragraphs 32-38, [2003] ECR I-3793. 19 Judgment of the Court of Justice of 21 October 2004 in Case C-447/02 P KWS Saat AG v OHIM, ‘Orange’, [2004] ECR I-10107 18 12 The yellow/green colour RAL 6018 is arranged above the light grey colour RAL 7035. The colour ratio is yellow/green: light grey = 1 : 30. There are also colour/figurative marks with a particular colour sample (e.g. Smart). These may overlap with figurative marks in colour. The question of how a trade mark may be applied for is not the same as how it affects the relevant public. A trade mark which is capable of graphic representation must in particular also have distinctive character in order to be registered, cf. Orange-Kws Saat20 and the colour green (Pantone 369c) and grey (Pantone 428u) without specific colour distribution21. It must also apply to colour marks that, in the context of genuine use of the mark, it is sufficient if a trade mark is used in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered (Article 15 CTMR). The use of a different, albeit similar, shade of colour does not lead to a difference only in elements. When an abstract colour mark is distinguished by its lack of outline, using special graphic design elements or the reduction to a particular colour sample may lead to a lack of genuine use of the colour mark. Use in a manner other than as a trade mark (for example as a decorative background) likewise leads to non-use as a trade mark. In the context of absolute protection against a likelihood of confusion in infringement proceedings, pursuant to Article 8(1)(a) CTMR, trade marks are only regarded as identical when no elements are added. Minor differences between the sign and the trade mark may escape the notice of the relevant consumer in this case. 20 European Court of Justice loc. cit. Judgment of the Court of First Instance of 25 September 2002 in Case T-316/00, Viking-Umwelttechnik GmbH v OHIM, ‘Green/Grey’, [2002] ECR II-3715. 21 13 E. Sound marks Definition Sound marks primarily involve the reproduction of sounds. Mixed forms, such as a combination of a sound with word or figurative elements, for example a word/sound mark (song mark) or a sound/figurative mark or even a sound/figurative/movement mark (a so-called trailer), are possible in principle. Graphic representation The European Court of Justice notes that the applicant must indicate that a trade mark applied for in musical notation or in written language is a sound mark, in order that the trade circles, in particular the economic operators, do not assume that it is a word mark or figurative mark22. In fact, the word mark ‘Kikeriki’ would not be aurally identical to ‘Kokeriko’ or ‘Cocledoodledoo’ according to the abovementioned principles. It appears contradictory if a trade mark which is meant to be perceived aurally rather than visually has to be represented graphically. The European Court of Justice considers provision of a sound mark in musical notation as sufficient ‘graphic representation’. It therefore opens up the register to tone sequences and melodies which can be represented in a system of notes divided into bars. It interprets this as musical notation with clefs (G, F or C), symbols for notes and rests, with their form (for the notes: semibreve, minim, crotchet, quaver, semiquaver, etc.; for the rests: semibreve rest, minim rest, crotchet rest, quaver rest, etc.) indicating their relative value, and possibly key symbols (sharp, flat, natural) – which together determine the pitch and duration of the tones – providing a faithful representation of the sequence of tones. However, the European Court of Justice obviously does not consider it necessary to indicate the instrumentation (for example ‘played on a piano’23) and the speed. Therefore, as in the case of a word mark a certain scope for interpretation is left as to whether a trade mark is spoken by an English person, a German person or a French person, a woman, a man or a machine, the European Court of Justice also allows certain variations in the case of sound marks. The most precise reproduction should be sound recording. Rule 3(6) CTMIR therefore provides for the possibility of representing a sound mark by means of an aural reproduction, but currently only in addition to a graphic reproduction of the sequence of sounds, especially in the form of musical notation or another description of the trade mark. Digitalisation of the register opens up new possibilities which the legislature certainly did not consider when establishing the criterion of graphic representation. 22 23 loc. cit. – Shieldmark, paragraph 57. Cf. paragraphs 15-16 14 Furthermore, a sign must be involved in the context of eligibility for registration as a trade mark. This can probably be accepted for the first bars of ‘Für Elise’, but not for the entire piece of music lasting several minutes. In the context of absolute grounds for refusal, it must be examined in particular whether a sound or a sequence of sounds (for example the lyrics) describes the goods or services or whether it has distinctive character. F. Olfactory marks Definition An olfactory mark is perceived by means of the nose. The mark is therefore an odour or a scent. Combinations are once again conceivable, such as for example with an image, a shape or even a flavour. Graphic representation An olfactory mark must also be clear, precise, self-contained, easily accessible and intelligible in the register, durable with regard to the possibility of renewal, and objective in order to avoid any element of subjectivity in the process of identification and perception. With regard to the cinnamon trade mark applied for in Germany, the European Court of Justice24 found as follows: firstly, a chemical formula of a substance was not a reproduction of the odour of the substance. It was not sufficiently clear and precise. It was moreover not intelligible enough, as few people would recognise in such a formula the odour in question. The European Court of Justice did not say whether this also applies if the goods or services in question are only aimed at a specialist public. Secondly, the deposit of an odour sample did not constitute a graphic representation. Moreover, an odour sample is not sufficiently stable or durable. It appears contradictory, however, if a trade mark which is intended to be perceived by means of the nose has to be represented graphically. The problem relates less to the filing of a reproduction of a scent than to the registration of this reproduction in a stable and durable manner. With the current level of technology, olfactory marks which are filed as a fragrance cannot be scanned by the Office and entered in the electronic register. The problem lies less on the side of the applicant than on the side of the Office. Finally, the European Court of Justice judged that the description of an odour was a graphic representation. However it was not clear, precise and objective enough. Here too, the European Court of Justice should probably be understood as meaning that a description of an odour as in the specifically mentioned case is not clear, precise and objective enough. In this respect, it is a question of fact. The same applies to the question 24 see judgment of the Court of Justice of 12 December 2002 in Case C-273/00 Ralf Sieckmann v Deutsches Patent- und Markenamt, ‘Methyl cinnamate’, paragraphs 69 ff, [2002] ECR I-11737 15 as to whether a combination of different forms of representation would be sufficient in a specific case. In a decision which was given after the statement by the Advocate General, but before the judgment of the European Court of Justice, a Board of Appeal was of the opinion that the indirect graphic representation of the scent of raspberries by a description was sufficiently precise. Finally, the scent of raspberries was immediately identified as such. However it lacked distinctive character for fuels, as the sign applied for was only regarded as an air freshener in the case of a normally unpleasant aroma. On the other hand, a decision was given on the scent of strawberries. In this case, according to the account given by the Court of First Instance, an expert report by a research institute specialising in the perception of aromas found that there were various versions of the scent of strawberries, which were perceived differently. This supports the argument that the description of the mark was not sufficiently precise in that case. The applicant should perhaps have indicated the exact variety of strawberry. It also remains uncertain whether the requirements for the certainty of the representation of a scent are any higher than for other types of trade mark. It should not be a criterion whether it is currently technically possible to artificially produce such a scent of a natural product or whether the use of an artificial scent corresponds to the use of the scent of a natural product. G. Position marks 1. Definition Trade marks in which the registration of a graphic pattern or a particular three-dimensional design is applied for in a particular position are designated as position marks. The subject of protection is therefore neither the shape of the product nor the pattern or the shape itself, but rather the pattern or the shape in a particular position on the product. In actual fact, this is possibly not a separate category of trade mark, but rather a subgroup of the abovementioned trade marks – therefore, for example, of a word, an image, a three-dimensional shape, a colour, a sound or a scent in a particular position or on a particular spot on a particular carrier. 2. Graphic representation Position marks are generally reproduced by means of a drawing in which the outline of the carrier, usually the product, is illustrated in dashed form, and on which a particular pattern or the shape is reproduced in a specific position. This representation is usually supplemented by a description. 16 In the case of the glass design, the Court of First Instance firstly accepted the eligibility for registration as a trade mark and therefore also the graphic representability, even if this was not directly the subject matter of the proceedings.25 Examples: scissors, inside of scissors, watch, watch case. Summary: In the case of graphic representability, one should not lose sight of the aim. With the provision of an electronic register, it appears likely, within the scope of technological progress, that the graphic representation will increasingly not have to be a figurative representation on paper. 25 In the context of the specific distinctive character, observations were then made about the durability of the impression of the design, however. Namely, the design may be perceived very differently according to the angle from which the goods are viewed, the brightness of the light and the quality of the glass. This will not enable the applicant’s goods to be identified and distinguished from those having another trade origin. Paragraph 30 17
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