As we reported in our recent newsletter on the subject, on 23 March 2016 the new European Union Trade Marks Regulation (EUTMR) entered into force and has significantly revised the current EU trade mark system. Under the previous 2009 Regulation, a European Union Trade Mark (EUTM) had to meet the following basic criteria to be considered as a trade mark: a) it had to be a sign, b) it had to be capable of being represented graphically and c) it had to be capable of distinguishing the goods and services of one undertaking from those of other undertakings.
The new EUTMR removes the requirement of graphical representation, and will come into effect when the new Implementing Regulation (Rules) are updated in September 2017. This may open up greater possibilities for registering non-traditional marks, particularly smells. The new requirement under Article 4(b) EUTMR will be that signs must be "represented on the Register of European Union trade marks, ('the Register'), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor". For non-traditional marks like smells, historically one of the biggest obstacles for registration has tended to be the requirement that the mark be graphically represented, as the Court of Justice of the European Union (CJEU) has set strict criteria that are not always easily satisfied.
Most 'marks' that businesses wish to register are not troubled by the requirement that it be a 'sign'. In the case of Philips Electronics NV v Remington Consumer Products , Jacob J (as he then was) stated the following:
"I think a “sign” is anything which can convey information. I appreciate that this is extremely wide, but I can see no reason to limit the meaning of the word. The only qualification expressed in the Directive is that it be capable of being represented graphically."
In fact, the only limitation that has been placed on what constitutes a sign was introduced by the CJEU in the case of Dyson Ltd v Registrar of Trade Marks (C-321/03). The contested sign was described as a "transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation". Dyson's transparent bin was not considered a sign because it was held to be a 'concept' and a mere property of the product that could not be perceived by any of the five senses. The CJEU viewed the application as an attempt to claim exclusive rights in all visual variations of a functional feature, as it was not limited to a particular shape or arrangement.
Similarly, the requirement that a sign be 'capable of distinguishing' is for all practical purposes only a formality for the vast majority of marks. As long as a sign is considered to be 'inherently' capable of distinguishing (i.e. functioning as a trade mark) then it satisfies the requirement. For instance, in the case of Libertel Groep BV (C-104/01) the CJEU held that while colours have little inherent capacity for functioning as trade marks "that factual finding would not justify the conclusion that colours per se cannot, as a matter of principle, be considered to be capable of distinguishing the goods or services of one undertaking from those of other undertakings".
As regards the graphical representation requirement, the CJEU held in the case of Sieckmann v Deutches Patent und Markenamt (Case C-273/00) that the representation:
"Must enable the sign to be represented visually, particularly by means of images, lines or characters, so that it can be precisely defined"
This visual representation also has to be clear, precise, self-contained, easily accessible, intelligible, durable and objective. In this case the verbal description, chemical formula and odour sample of a fruity cinnamon smell were not considered sufficient to meet the test. The Court emphasised that the purpose of what has now become known as the 'Sieckmann criteria' is to unambiguously define the mark, create an accessible register and to ensure legal certainty for users of that register. In applying these criteria to the sign, the Court came to the following conclusion:
"As regards a chemical formula... few people would recognise in such a formula the odour in question. Such a formula is not sufficiently intelligible. In addition... a chemical formula does not represent the odour of a substance, but the substance as such, nor is it sufficiently clear and precise. It is therefore not a representation for the purposes of article 2 of the Directive. In respect of the description of an odour, although it is graphic, it is not sufficiently clear, precise and objective. As to the deposit of an odour sample, it does not constitute a graphic representation for the purposes of article 2 of the Directive. Moreover, an odour sample is not sufficiently stable or durable."
It was also held that a combination of these elements was still not enough to satisfy the Sieckmann criteria.
In its legal submissions, Sieckmann argued that olfactory marks (smells) were not excluded by the graphical representation requirement as it should be interpreted to mean "represented, or electronically represented or deposited in another way". The new EUTMR has now made this interpretation a reality because, in principle, there is no longer any need for a representation to be visual but it must still be 'clear' and 'precise'. The preamble to the EUTMR provides that a "sign should be permitted to be represented in any appropriate form using generally available technology, and thus not necessarily by graphic means, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective". It would therefore seem that the intention of the EUTMR is to maintain the Sieckmann criteria. The interesting issue this now raises is whether olfactory/smell marks will still be caught out by the Sieckmann criteria, or indeed, whether the Sieckmann criteria still apply at all. Arguably, the fact that the EUTMR only specifies two of the Sieckmann criteria, namely that a representation must be clear and precise, indicates that the other 5, namely that it be self-contained, easily accessible, intelligible, durable and objective, no longer apply. The interpretation of this provision is potentially important for olfactory marks in view of the unconventional ways in which such marks must be represented. For instance, in Sieckmann, the Court only described the odour sample as not sufficiently stable or durable but did not state that it was unclear or imprecise. Does this mean that odour samples would now satisfy Article 4(b) EUTMR?
However, if one assesses the matter through the overarching principles of legal certainty and sound administration underpinning the decision in Sieckmann, it is likely that any 'non-graphical' representation (whatever that may be) on the EU register would still in practice need to meet the standards set by Sieckmann, as these same issues would arise irrespective of whether a representation is graphical or not. It should also be noted that even if the representation of olfactory marks on the register was no longer an issue, a mark would still need to pass the requirement that it possesses sufficient distinctive character to be registrable. In Sieckmann, ultimately the cinnamon smell would have still been refused by the Bundespatentgericht as "under paragraph 8(2) of the Markengesetz, that sign's lack of any distinctive character precluded its registration in any event". If and when more olfactory marks make it through to the examination stage where their inherent distinctive character is assessed, businesses would then at least have the opportunity to register their marks on the basis of acquired distinctiveness through use in trade under Article 7 EUTMR.
I think it likely that many of the large perfume houses will view the change in law as an opportunity to test the waters again and acquire trade mark protection for their fragrances. If such an endeavour results in smells on the EU trade mark register then in future perhaps the legal representative of an infringing party may open up a cease and desist letter to something a bit more pleasant than he/she is normally used to.