Whenever a person creates a work of the mind, it is necessary that it be protected. This is the role of intellectual property rights, these are the set of rights conferred on the individual by an intellectual creation. They usually give the creator an exclusive right to use the creation for a certain period of time. While some intellectual property rights are acquired automatically, by the very fact of the creation of the work – such as copyright in France – to be protected by other intellectual property rights, it is necessary to perform formalities, this is the case of obtaining a trademark right for which it is necessary to meet a certain number of criteria. How to obtain this protection?
Control of intellectual property
Within the European Union, there is a 4-level system for registering a trademark. The choice of protection depends on the needs of the business. Some companies are only intended to carry out their activity in the EU Member State in which they are established, therefore they will only register their trade mark at national level.
Some countries have developed a common system for the protection of intellectual property rights. Protection is therefore exercised at a regional level, this is the case of Belgium, the Netherlands and Luxembourg which have a common body in the control of intellectual property: the Benelux office for intellectual property. .
The European Union has developed its own trademark protection regime to allow all companies for which it is necessary to benefit from protection in all the Member States of the Union to enjoy it. The European Union Intellectual Property Office (EUIPO) is responsible for the management of trademarks.
To complete this system, an international convention has been concluded to protect trademarks at the international level: it is possible to extend the protection granted by one of the other 3 levels at the international level to all signatory countries of the Madrid Protocol.
For all levels of this system, conditions must be met in order to benefit from protection under trademark law. The Directive 2015/2436 aimed to harmonize the trademark laws of member states. To promote the development of economic activities “ it appears necessary to provide for a Union trade mark regime conferring on businesses the right to acquire, under a single procedure, European Union trade marks which enjoy legal recognition. uniform protection and produce their effects throughout the territory of the Union “, this is the role of regulation (EU) 2017/1001 of June 14, 2017 , completed by delegated regulation (EU) 2018/625 of March 5 2018 . Despite the vocation of these regulations to apply to European trademark law, they have had an impact on the rights of different member states. Article 4 of the 2017 Regulation specifies that trade marks constitute all signs capable of distinguishing the products or services of one company from those of other companies and which may be represented in the European Union trade mark register “< em> in a way which enables the competent authorities and the public to determine precisely and clearly the object benefiting from the protection conferred on their holders ”.
“ a sign capable of graphic representation serving to distinguish the products or services of a natural or legal person “
This definition had to be taken into account by national regulations. This is the case of French law which modified its definition of the concept of trademark to article 711-1 of the French Commercial Code . While it was defined as “ a sign capable of graphic representation serving to distinguish the goods or services of a natural or legal person . “Since 2019, the article no longer takes into account the notion of” graphic representation “in itsdefinition of the mark: the mark is “a sign serving to distinguish the goods or services of a natural or legal person from those of other natural or legal persons. “. As for French law, the Benelux convention has been modified by removing the requirement for graphic representation, is written in article 2.1 of this convention that “ All signs, including words, including names of persons, or designs, letters, numbers, colors, shape of a product or its packaging, or sounds, provided that these signs are specific to:
- distinguish the products or services of one company from those of other companies; and
- be represented in the register in a way that allows the competent authorities and the public to determine precisely and clearly the subject matter benefiting from the protection conferred on its holder. “. This novelty can constitute an opportunity for companies because new elements could be the subject of protection under trademark law, for example it would be possible to imagine a sound mark. The EUIPO has already admitted this possibility by granting the brand quality the sound of opening a champagne cork to designate beers and alcoholic beverages however, the recognition of a sound mark seems rather complex, because many applications have been refused by the authorities. One of them resulted in a judgment of the European Union court of July 7, 2021 . He refused to recognize the sound of a drink can opening as a mark, followed by a 1 second silence and a 9 second crackle. EUIPO considered that “a sound inherent in the use of the goods in question, so that the relevant public would perceive that mark as a functional element and an indication of the qualities of the goods in question and not as an indication of their commercial origin . “. To be able to obtain the qualification of mark, the court adds that “ that it is necessary that the sound sign whose registration is applied for has a certain significance allowing the consumer concerned to perceive it and to consider it as a mark and not as an element of a functional nature or as an indicator without its own intrinsic characteristic . “. In this case, the sound produced by the can cannot be considered to be distinguished from that produced by others. Distinctiveness cannot therefore be accepted. But it should be noted that the distinctive character of a sound mark cannot be assessed in the same way as that of a three-dimensional mark (which we will see later) because the perception of the average consumer is not necessarily the same in the case of a three-dimensional mark than in the case of a sound mark.
The question still arises: will it be possible to register more atypical marks such as olfactory or taste marks?
Certain conditions must be met to benefit from protection under trademark law: only a lawful mark, available, capable of graphic representation and distinctive can be protected by trademark law.
Distinctiveness is provided for in Article 7 of the 2017 Regulation, but this does not define in any way what is “distinctiveness”. The question therefore arises as to how this notion should be interpreted.
The relevant Public with a medium to high level of attention
The Court of the European Union provided an answer in a judgment of 14 July 2021 by which it annulled the decision rendered by the Board of Appeal of the EUIPO which had refused the registration of a three-dimensional trademark filed by Guerlain for lack of distinctiveness. The three-dimensional mark will generally protect the shape of a product or its packaging when it has a certain peculiarity, for example, Lego figures are a three-dimensional mark ( General Court, June 16, 2015, T ‑ 395/14 </ a>). The Guerlain company filed an application for a three-dimensional trademark in order to protect under trademark law the shape of its lipstick tube. This application was rejected on the basis of Article 7 (1) (b) of the Regulation (EU) 2017/1001 on the grounds that the shape of the lipstick tube was not distinctive. In accordance with the judgment of 29 April 2004, Henkel / OHIM, the Court recalls that “ The distinctive character ‘a trade mark, within the meaning of Article 7 (1) (b) of Regulation 2017/1001, must be assessed, on the one hand, in relation to the goods or services for which registration is requested and, on the other hand, in relation to the perception of the relevant public ‘, but the assessment of the distinctive character of a mark is not based on the criterion of novelty or originality of ‘a product, all that matters is “ that the mark enables the relevant public to identify the origin of the goods or services protected by it and to distinguish them from those of other companies “. The European judges considered that the particular shape of the lipstick allowed the “ relevant public with a level of attention ranging from medium to high ” to identify the origin of the products concerned, it therefore stands out from those of its competitors.
In addition to the classic criteria for a mark to be registered, the three-dimensional mark must meet specific conditions, it is provided in Article 7 (1) e), that registration is refused: “ signs consisting exclusively of:
by the shape, or another characteristic, imposed by the very nature of the product; […] Necessary to obtain a technical result; […] Which gives substantial value to the product ; “. Therefore, the product, therefore the form is not guided by its function, cannot be the object of protection. Although the EUIPO considered that the shape of the Guerlain lipstick was guided only by its function, the European judges did not follow this reasoning and concluded that the trademark registration was valid because of the specific product characteristics.
Consumers rely on a sign and not on the form of a product or its packaging
On the occasion of that judgment, the Court recalls that “ The criteria for assessing the distinctive character of three-dimensional marks consisting of the shape of the product itself are not different from those applicable to other categories of marks </ em> ”. But the proof of the distinctiveness of the products can be more difficult to bring, in particular because “ the perception of the average consumer is not necessarily the same in the case of a three-dimensional mark, constituted by the appearance of the product itself, than in the case of a word or figurative mark, which consists of a sign independent of the appearance of the goods it designates. ‘, this is in particular due to the fact that generally, for presuming the origin of a mark Consumers rely on a sign and not on the form of a product or its packaging.
We could see the difficulty of obtaining the qualification of three-dimensional mark, the CJEU in particular refused in a judgment of February 24, 2016 this qualification to the Coca-Cola company for metal, glass and plastic bottles which took the shape of the iconic glass bottle , but without the flutes. The judges noted that no characteristic on the Coca-Cola bottle presented made it possible to distinguish it from the bottles of other companies.
Secondly, the new European legislation grants greater protection to holders of prior rights, for example they now have the possibility of initiating opposition proceedings against the registration of the mark. The regulation increases the field of opposable prior art: trade names, signs, geographical indications, etc. This implies that as soon as there “ there is a likelihood of confusion in the mind of the public of the territory in which the earlier mark is protected “, the mark may be refused its application for registration ( article 8 regulation 2017/1001). This novelty provides more effective protection for economic players who can now benefit from protection rights vis-à-vis a potential trademark without being the holder of a registered trademark.
Greater protection is also granted to the owners of the trademark themselves, Article 9 of Regulation 2017/1001 grants them new rights: “the owner of this European Union trademark is also entitled to prevent any third party from bringing products into the course of trade into the Union without them being put into free circulation there, when these products, packaging included, come from third countries and bear without authorization a mark which is identical to the European Union trade mark registered for these products or which cannot be distinguished, in its essential aspects, from this mark. “. This provision is one of those which led to an amendment to the Irish Law 1996 on trademarks : now the owner of a registered trademark has the possibility of preventing any third party from bringing products into the State when they come from third countries and carry without authorization a trademark identical to the trademark registered in the state.
Finally, we can see that the new European trademark law has changed the legislation of many member states and that it offers new possibilities to businesses, both in the protection of their already acquired rights and in acquiring new ones.
Eternoscorp remains at your disposal to assist you in your efforts to protect your intellectual property rights as well as to support you in the event of violation of these rights by a third party.