#IPLaw, #TMLaw – Introduction to so-called non-traditional marks acceptable in Europe

As you may already know, the trademark is a title deed, having the specificity of protecting a distinctive sign for products and / or services designated. As a title deed, it enters the company’s assets and significantly affects its valuation.

The trademark principle is to enable the consumer to associate your competitive advantage with your business. In broad outline, if a consumer sees a sign on a third-party’s product that makes him think it’s your product (because of the similarity to your trademark), the third-party has de facto infringed your trademark. In practice, it is recommended to file trademarks for both the company name, the logo, and each new product or service.

The European Union IP Office (EUIPO) has modified its rules to remove the requirement of graphic representation of the registered trademarks. This opened the door to the filing of what was later called non-traditional marks.

We will now give a classification of these marks. Non-traditional marks are those whose filing may be of interest but may generate specific issues that are critical to registration. Prior to the change of law, some of these categories had a high probability of rejection for reasons that may persist and that must be addressed in each case.

Traditional trademarks include
– word mark, and
– figurative mark with or without word elements;

Non-traditional trademarks include
– shape mark with or without verbal elements;
– position mark;
– pattern mark;
– color mark or combination of colors;
– sound mark;
– motion mark;
– multimedia brand; and
– hologram mark.

1 °) Word mark

In the terms used by the EUIPO, “a word mark consists exclusively of words or letters, numerals, other standard typographic characters or a combination thereof that can be typed“.

These are classically words forming a mark regardless of the style and colors of the of characters.

For example “SOTERYAH” is protected by a French and UK filings independently of the logo. This is probably the case with the name of your company.

2 °) Figurative mark

According to the official definition, “it is a trade mark where non-standard characters, stylisation or layout, or a graphic feature or a colour are used, including marks that consist exclusively of figurative elements” .

Company logos, product ranges or products fall into this category.

The figurative mark may include word elements and forms a separate category. It is for example the case of a mark combining a logo and a company name or product / service name. For a better protection, it is recommeded to give preference to a figurative mark and a word mark as much as possible (although this increases the costs).

3 °) Shape mark

In the terms used by the EUIPO, “a shape mark consists of, or extends to, a three-dimensional shape. It can include containers, packaging, the product itself or its appearance“.

It concerns the protection of the three-dimensional form of a product or its packaging, considering that this form is considered by the public as identifying the products of the applicant, and that the form is not guided by technical considerations.

The shape of the Mini-Cooper was the subject of many comments. The main examples concern the shapes of bottles and perfume flasks.

The shape mark may also include verbal elements. Again, for better protection, preference should be given, as much as possible, to separate filings, for example a figurative mark and a word mark (in spite of the costs).

4 °) Position mark

According to the official definition, “a position mark consists of the specific way in which the mark is placed or affixed to the product“.

The most related example concern the position of elements on shoe sides or soles. Distinctiveness and non-deceptiveness must, however, be verified on a case-by-case basis.

5 °) Pattern mark

In the terms used by the EUIPO, “a pattern mark consists exclusively of a set of elements which are repeated regularly“.

Many examples come to mind, including motifs of leather luggages or bags.

6 °) Color mark (single color)

According to the official definition, “a colour single mark is just that – a trade mark which consists exclusively of a single colour (without contours)“.

Examples could include colors of product or of their packaging, such as packagings of sodas or chocolates. Here again, particular attention must be given to the criteria of distinctiveness and non-deceptiveness namely.

The combination of colors is also possible and belongs to a separate category.

7 °) Sound mark

In the terms used by the EUIPO, “a sound mark consists exclusively of a sound or a combination of sounds“.

This category includes jingles or sound backgrounds, such as the famous ones of a transport company jingle or of a lion roar.

8 °) Motion mark

According to the official definition, “a trade mark consisting of, or extends to, a movement or a change in the position of the elements of a mark“.

Moving logos of computer programs or cinematographic productions may fall into this category.

9 °) Multimedia mark

According to EUIPO, “it consists, or extends to, the combination of images and sound“.

This category should be considered if it is not planned to separate the movement from the sound. In the opposite case, preference should be given to multiple filings, for example a movement mark and a sound mark, for better protection.

10 °) Hologram mark

According to the official definition, “a hologram mark consists of elements with holographic characteristics“.

They can be defined as 3D images appearing as “suspended in the air”. Typical examples are anti-fraud systems such as holograms of identity documents.

As a conclusion there are at least 10 ways to mark your territory, so on your marks!

SOPERYAH IP

#ProfitIP – Profitability of IP (ITC)

As with the research tax credit (RTC) already presented in a previous post, the innovation tax credit is another tax tool that can offset the high costs that patent expenses can represent for a good return on the patent portfolio (combined with communication and marketing efforts).

Innovation Tax Credit (ITC)

Beneficiaries:
SMEs with less than 250 employees whose turnover is less than 50M € or whose balance sheet total is less than 43M €.

Eligible expenditure:
Costs related to the design or construction of prototype (s), including personnel costs and capital assets.
Costs of acquiring patents and models, and depreciation relating thereto.

Note: the maximum base is 400 k €.

Rate:
20%, a maximum of 80 k €.

For the record, the RTC rate is 30% up to 100 million euros 5% beyond.

It is therefore necessary to cumulate the ITC with other tools, in particular the RTC.

SOPERYAH IP

#IPLaw, #Brexit – Brexit and implementation of the unitary patent

As you may remember, legislative changes that have been expected for decades are currently underway across the European Union, in order to establish what is now called the European patent with unitary effect (which we will abbreviate as “unitary patent”). .

The unitary patent is intended to implement a single title valid throughout the European Union and for which infringement disputes may be ruled ar an European scale, contrary to the “classic” European patent for which at the end of the procedure for grant, the right holder obtains several independent territorial rights, within the competence of eah national jurisdiction.

The prerequisites for the entry into force of the unitary patent and of the unified court are almost all achieved with the exception of the ratification of Germany where a constitutional problem has been raised.

In these circumstances, the impact of Brexit could have caused great upheaval, but the British government announced that Brexit will have no influence on the unitary patent as already presented in our posts. The agreement on the Unified Patent Court was ratified by the United Kingdom on April 26, 2018.

However, the unitary patent is intended to cover the European Union only, which raises the question of the validity of the unitary patent in the United Kingdom.

The most likely solution will be to get closer to what will happen for the EU trade mark after the Brexit, as already discussed in our brief concerning the agreement protocol of 19 March 2019 on the application of Brexit. As you may remember, the EU trade mark will become a comparable English mark and its validity will be linked to that of the EU trade mark.

It therefore appears that the likely outcome will be the following: the European patent with unitary effect will have effect in EU countries, and will be validated in a conventional manner in non-EU states that are party to the European Patent Convention such as already today Switzerland and Turkey, and later the United Kingdom.

To follow closely …

SOPERYAH IP

#IPBasics – Trademarks

In the same was as for patents and design rights, the trademark rights is a title deed, with the particularity of protecting a distinctive sign for the designated products and / or services. As a tite deed / right, it enters the company’s assets and significantly affects its valuation.

The case law concerning what can be the subject-matter of a trademark registration is abundant. What raises least objections is to go for a sign subject to graphic representation, such as numbers, letters, a word, a sentence, a drawing / logo, a combination of colors … (Recent EU law increase the possibilities).

A protectable sign must not be desptive (ie: likely to mislead the consumer as to the nature or origin of the product or service), or descriptive (ie describing features of the product or of the service covered).

The principle behind trademarks is to enable the consumer to associate your competitive advantage with your business. For example, if a consumer sees a sign on a third-party product that makes them think it’s your product (because of the similarity to your brand), the third-party has actually infringed your trademark.

It is therefore important to quickly take advantage of these prerogatives by “marking” your competitive advantage over your products and / or service with a trademark filing covering the countries where you operate. You will be able to use this legal weapon at least in a dissuasive way vis-à-vis your competitors. In addition, a registered trademark always makes a good impression in the mind of the consumer and could in fact significantly increase your sales. This makes the trademark an effective commercial weapon.

The trademark can be renewed without limit of duration.

The value of the trademark is generally determined by the income provided by the goods or services covered by the mark evaluated in relation to the same product without the said mark.

For example, in the top 100 published by Forbes magazine in 2017, the Apple trademark has an estimated value of 170 billion US $. The first French brand (20th of the top 100) is Louis Vuitton with 28 billion US $.

The path is long, so on your marks …

SOPERYAH IP

#ProfitIP – Profitability of IP (RTC)

In view of the high costs that patent expenses can represent, in addition to marketing efforts, it is important to use tax tools in order to have a good profitability of the patent portfolio.

Research tax credit (RTC)

Beneficiaries:
Companies of any status subject to companies tax (IS) or income tax (IR).

Elligible expenses:
Expenses related directly or indirectly to R&D, including patent and watch fees, salaries, depreciation allowances of immobilisation and of patents,… and even expenses related to the creation of new collections in the textiles-clothing-and-leather field.

NB: Expenses of experimental agricutural stations and farms are doubled.

Rate:
30%, up to 100 million euros; 5% beyond.
(For DOMs 50%, up to 100 million euros, 5% beyond).

SOPERYAH IP