On 1 October 2017, several modernisations and amendments to the EU Trademark Regulation came into force. Some amendments will make it easier to obtain trademark protection of non-traditional trademarks, including motion marks, which in practice have been difficult to register up to now.

On 1 October 2017, the codified EU Trademark Regulation No. 2017/1001 came into force thereby repealing the former requirement in Article 4 of the EU Trademark Regulation No. 207/2009 that a sign must be capable of being represented graphically in order to be registered as a trademark. From now on, trademark applicants can represent a sign in any appropriate form using generally available technology, and not necessarily by graphic means, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.1 However, it is a requirement that the sign is capable of being represented in the Register of European Union trademarks in a manner which enables the competent authorities and the public to determine the actual subject matter of the protection of the trademark.2

Graphic representation – implications of the former requirement with respect to motion marks

The purpose of the former requirement for graphic representation was to delimit the mark to determine the actual subject matter of the protection which a registered trademark provided for the proprietor. The requirement aimed at avoiding any type of subjectivity relating to the identification and perception of the mark. Therefore, the means for graphic representation had to be unambiguous and objective. Signs that were not capable of being represented graphically were excluded from registration as an EU trademark.

According to the Court of Justice of the European Union’s case law, non-traditional marks, including olfactory, acoustic and motion marks, could constitute trademarks if the mark was capable of being graphically represented in particular by means of images, lines or characters, and if the representation was clear, precise, self-contained, easily accessible, intelligible, durable and objective.3

In theory, it has, thus, been possible to register a motion mark as an EU trademark for a long time. In practice, however, the requirement for graphic representation made it difficult for trademark applicants to register motion marks since, by definition, a motion is difficult to represent by means of images, lines or characters.

The European Union Intellectual Property Office, EUIPO, accepted that motion marks were represented graphically by means of a number of stills showing the image sequences of the mark accompanied by a written description of the motion mark. When a sign was delimited by both a graphic representation and a written description, the description, in order for it to be e.g. clear, precise, intelligible, and objective, had to coincide with what could be seen in the graphic representation.4

However, this requirement proved to be non-transparent and difficult to comply with for the trademark applicants, which is e.g. illustrated by several cases in which the registration of a motion mark was refused by the EUIPO because the stills in the application combined with the written description did not clearly show the motion in the mark and, accordingly, it was not sufficiently clear how the motion moved forward between the various stills.

In a digital age in which digital media has largely outperformed the written media, motion marks play an increasingly larger role in enterprises’ branding strategies. Accordingly, it is inconvenient and unsustainable that the marks often are not capable of being registered as trademarks. This has undoubtedly been one of several factors contributing to the repeal of the requirement for graphical representation as a result of the new regulation.

Registration of motion marks from now on

On its website, the EUIPO has officially stated the alternative media and formats that are considered to comply with the recitals of the new trademark regulation. As of 1 October 2017, it has been possible to represent motion marks by means of an electronic video file (MP3, JPEG, and MP4 format) showing the motion mark in its natural form. Alternatively, the motion mark can still be represented by a series of stills, numbered if appropriate, showing the movement. The representation may still be accompanied by a written description of the mark, but this is no longer a requirement.

In its decision of case R 1439/2016-2 of 3 March 2017, the Second Appeals Chamber of the EUIPO gave an indication of how the new rules may ease the registration access of motion marks. In the case, the Danish biotech company Nuevolution A/S appealed the EUIPO’s refusal to register a motion mark where the motion was relatively modest and therefore difficult to represent by means of a series of stills.

The Appeals Chamber also refused to register the motion mark on the ground that it did not satisfy the requirement for graphic representation since the submitted sequence of stills compared with the written description made it impossible to understand the motion which was the subject matter of the registration  as a trademark. However, in paragraph 25, the Appeals Chamber stated that, after 1 October 2017, Nuevolution “may consider filing a new trademark application with an electronic file of the motion mark”.5

Accordingly, the Appeals Chamber recognised that the new possibility of representing a motion mark in a video format may contribute to the removal of any doubt concerning the nature of the motion for which the application has been filed, including marks with modest motions which may be difficult to represent precisely in the form of stills.