European trade mark law is going through the motions …

Earlier this year, we reported on olfactory marks (i.e. trade marks for smells).

We reported that these types of trade marks were becoming more accessible to brand owners thanks to recent changes in EU trade mark law which changed the requirements for trade mark registrability.

These changes to EU trade mark law are coming into effect in the UK in January 2019 and these changes will also allow brand owners to obtain trade mark protection for motion-based trade marks (e.g. GIFs, holograms and other forms of moving images) in a much simple manner in the UK.

The concept of motion-based trade marks is by no means unheard of (e.g. Nokia’s clasping hands sequence, the Microsoft start-up, Sony Ericsson’s colour liquid sequence and BT’s rotating globe).

It is technically possible to register trade marks for moving images under the current law in the UK, but the process is ludicrous (applicants must create a 2D flicker book of multiple still images and an accompanying detailed description of the mark’s movement).

Ahead of the new law coming into force in January 2019, the UKIPO has advised that applicants will be able to submit applications related to moving images and sounds MP3 or MP4 files.

A key point to observe is that these changes to EU and UK trade mark law are catalysed by changes in technology that are already affecting consumer activity. New technologies are constantly changing the way consumers interact with products and services. We no longer rely (exclusively at least) on traditional brand identifiers like words, logos and taglines to identify the sources of the goods and services we buy. We see and hear products and services in a variety of different ways (including via audio and visual stimuli online and over social media).

Brand owners who wish to protect the investments that they made in their brand identities should seek to identify all key brand identifiers (including word marks, logos and other figurative marks, sound marks, motion marks, colours, smells and perhaps other non-conventional marks) and seek to obtain trade mark protection for all such brand identifiers where possible.

Briffa are experts in trade marks and intellectual property law and advise on all aspects of contentious and non-contentious trade mark law and practice (including multi-jurisdictional trade mark portfolio management and advice). We offer free 30-minute consultations to all new clients. Please contact us on info@briffa.com or 020 7096 2779 if you would like to set up a call or a meeting.

Written by Éamon Chawke