After the Industrial Property Law Act was amended, the change of the legal definition of trade mark has become a widely discussed topic. The changes in both the EU and national law were guided mainly by the desire to simplify registration procedures for non-traditional marks, such as sound, colour, hologram, smell or taste. Due to their specificity, unconventional trade marks have certain advantages over the regular ones, e.g. acoustic, olfactory or gustatory signs can be perceived by the hearing impaired.
Currently, Article 120 of the Industrial Property Law Act reads as follows:
- A trade mark may consist of any sign capable of distinguishing the goods of one undertaking from those of another and of being represented on the register in a manner that enables the determination of clear and precise subject matter of the protection.
- Within the meaning of paragraph 1, a trade mark may be constituted, without limitation, by a word, including a name, or by a drawing, letter, numeral, spatial form, such as the shape of goods or packaging, or sound.
The definition change involves abolishing the graphic representation requirement, which may be said to have been replaced with the requirement that the sign must be capable of being so represented on the register as to enable the determination of clear and precise subject matter of the protection. This new requirement must be construed by reference to Recital 13 of Directive 2015/2436, which reads that a trade mark should be capable of being represented in a manner which is clear, precise, self-contained, easily accessible, intelligible, durable and objective. This test was directly relied upon by the Court of Justice of the European Union in case C-273/00 Sieckmann vs. Deutsches Patent und Markenamt.
The Polish Patent Office’s Guidelines for applying for registration of unconventional trade marks make it clear that, now that the graphic representation requirement is no loner in force, the Office will be able to accept new mark types which were not provided for in Polish law before.
A sound (acoustic) mark is one that incorporates solely a sound or a combination of sounds. In practice, such marks have been accepted by the Polish Patent Office for a long time now. They were previously represented as (i) music score, (ii) a combination of notes and text, or (iii) a sonograph. See below for examples of registered sound marks according to the Patent Office’s Register Plus database:
Those forms of recording sounds were not easily readable because not everybody is able to translate musical notes into sounds and not every sound can be recorded on the music score. Currently, pursuant to latest Patent Office guidance for those applying for registration of new mark types, a sound mark must be represented by an audio file which permits the sound to be retrieved or by a faithful representation of the sound as sheet music. If an application is accompanied by both audio file and score, the Office will ask the applicant to choose only one of them.
A motion mark is a sign consisting of, or extending to, a movement or a change in the position of the elements of the mark. When graphic representation was still a requirement, such signs were often presented as a time-lapse sequence of images where the motion itself was described in attachment. Currently, you can file for a motion mark by sending a video file (mp4 of up to 50MB) or a series of stills in JPEG format which show the movement or change of position. It is indicated that such stills may be numbered or accompanied by a description explaining the sequence. See below for examples of registered motion marks according to EUIPO’s eSearch Plus database:
In the European Union, the opportunity to file multimedia signs for registration as EU trade marks opened up with entry into force of Regulation 2017/1001. A multimedia mark is a sign consisting of, or extending to, the combination of image and sound. The words “consisting of” mean that, in addition to image and sound, a multimedia mark may also include words, graphics, etc. Currently, pursuant to latest Patent Office guidance for those applying for registration of new mark types, this kind of mark must be represented by submitting an audio-visual file containing the combination of the image and the sound (i.e. only using an mp4 file of the maximum size of 50MB). See below for examples of registered multimedia marks according to EUIPO’s eSearch Plus database:
A hologram is a trade mark consisting of elements with holographic characteristics. Currently, pursuant to latest Patent Office guidance for those applying for registration of new mark types, this kind of mark must be represented by a submitting a video file (mp4 of up to 50MB) or a graphic or photographic representation containing the views which are necessary to sufficiently identify the holographic effect in its entirety. For an example of a registered hologram as per EUIPO eSearch Plus, see below:
Smell and taste marks
The change in trade mark definition is said to permit protection to be extended onto smell and taste marks in future. These marks are currently not registrable due to technological constraints which prevent them from being accessed to enable the recipients, including authorities, consumers and competitors, to clearly and precisely determine the subject-matter of protection. Unfortunately, despite considerable technological progress, no technology has yet been developed to allow for transmission or reception of smell or taste by electronic means while at the same providing digital instructions that can successfully maintain stability and certainty of the sensation.
Poland has abolished the graphic representation requirement as a measure to implement Directive 2015/2436. The legal definition in Article 3 of that Directive faithfully reflects the definition of the European Union trade mark in Article 4 of Regulation 2017/1001. As an aside note that unconventional signs can be registered as EU trade marks since 1 October 2017 (effective date of Regulation 2017/1001) and as national trade marks since 16 March 2019.
The new statutory definition certainly offers more leeway in representing trade marks being filed for registration. The change is meant to afford protection to unconventional signs which are capable of being represented otherwise than through graphics. The abolition of the graphic representation requirement will not affect the filing process for word marks. The other marks (figurative, word and figurative, 3D, position, pattern, colour or colour combination) can either be represented as graphics (on the application form) or submitted as JPEG files. As to unconventional signs, these can be presented graphically as well, e.g. music score for a sound mark or a series of stills for a motion mark. Any mark type can be accompanied by a description, a strategy particularly recommended for position marks constituting patterns or colours, for motion marks and for “other” marks type.
Check what we refer to:
- The Industrial Property Law Act of 5 April 2017;
- The Act of 20 February 2019 to amend the Industrial Property Law Act;
- Explanatory Memorandum for the Act to amend the Industrial Property Law Act of 30 June 2000 (Journal of Laws of 2017, item 776);
- Directive (EU) No. 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (recast)(OJ L 336, 23.12.2015, p. 1 and OJ L 110, 24.6.2016, p. 5)(“Directive 2015/2436”);
- Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (“Regulation 2017/1001”);
- Polish Patent OfficeGuidelines for applying for registration of unconventional trade marks;
- Common Communication on the representation of new types of trade marks.