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UK IMPLEMENTATION OF TRADE MARK DIRECTIVE: NO NEED TO BE GRAPHIC
LEADING UK, GERMAN AND EUROPEAN INTELLECTUAL PROPERTY SPECIALISTS
The Trade Mark Regulations 2018 (SI 2018/825), which implement the Trade Marks Directive (EU) 2015/2436, will come into force on 14 January 2019. One of the key changes that this will introduce to the UK Trade Marks Act is the non-graphical representation of trade marks. The requirement for graphical representation will be removed, which will allow new ways of depicting non-traditional marks. On a practical level, this means that you will be able to upload a wide range of digital file formats; for example, audio files for sound marks or moving images for multimedia marks.
UK IMPLEMENTATION OF TM DIRECTIVE
The European Union Intellectual Property Offi ce (EUIPO) together with the European Commission and nati onal offi ces have draft ed a Common Communicati on on this very subject, which gives a provisional overview of the defi niti ons, types of mark and fi le formats that each country intends to accept. These depend on progress that Member States make towards implementi ng their nati onal legislati on and, therefore, the Common Communicati on is updated every six months.
The latest version is available here:
htt ps://www.gov.uk/government/publicati ons/common-communicati on-on-representati on-of-new-types-of-trade-marks
The removal of the graphical representati on requirement means that, from 14 January 2019, signs can be represented in any appropriate form using generally available technology, as long as the representati on is clear, precise, self-contained, easily accessible, intelligible, durable and objecti ve. This might make it easier for applicants to secure protecti on for non-traditi onal representati ons, such as sounds and smells, as well as electronic fi les, holograms and moving marks.
Ahead of the entry into force of this provision, the Common Communicati on provides informati on on the alternati ve media and formats that are considered to comply with the new provision. New representati on requirements will apply for diff erent types of marks, e.g. sound marks must be represented by submitti ng an audio fi le reproducing the sound or by an accurate representati on of the sound in musical notati on.
A non-exhausti ve list of the 10 most popular trade mark types, including fi ve new types (positi on, patt ern, moti on, multi media and hologram) are listed in the table below. The defi niti on of each type of trade mark is based on the defi niti ons contained in Arti cle 3 of the EU Implementi ng Regulati on which came into eff ect from 1 October 2017 in respect of EUTMs. As regards UKTMs, the Common Communicati on states that “the UK regards trade mark type as an aid to administrati on and does not seek to defi ne types per se”. Although positi on, patt ern, moti on, multi media and hologram types of trade marks are not specially menti oned in current UK legislati on, it will be possible to fi le these types of marks as “Other”. The electronic fi le formats that the UKIPO intends to accept are listed under the column headed “format required”, and a full overview of the accepted electronic fi le formats for all types of trade marks that each Offi ce intends to accept can be accessed here:
htt ps://assets.publishing.service.gov.uk/government/uploads/system/uploads/att achment_data/fi le/768553/accepted-electronic-fi le-formats-2018.pdf
Type of mark Format required
Defi niti on Means of representati on
word n/a A trade mark consisti ng exclusively of words or lett ers, numerals, other standard typographic characters or a combinati on thereof.
The mark shall be represented by submitti ng a reproducti on of the sign in standard script and layout, without any graphic feature or colour.
fi gurati ve JPEG GIFTIFPNG JFIF
A trade mark where non-standard characters, stylisati on or layout, or a graphic feature or a colour are used, including marks that consist exclusively of fi gurati ve elements or a combinati on of verbal and fi gurati ve elements.
Colour claims are no longer possible, the representati on must contain the colours, where applicable, and all the elements of the sign.
shape OBJSTLX3JPEGGIFTIFPNGJFIF
A trade mark consisti ng of, or extending to, a three-dimensional shape, including containers, packaging, the product itself or their appearance.
The term ‘extending to’ means that the mark may cover not only shapes per se, but also shapes that contain word or fi gurati ve elements, labels, etc.
The mark shall be represented by submitti ng either a graphic reproducti on of the shape, including computer-generated imaging, or a photographic reproducti on. The graphic or photographic reproducti on may contain diff erent views.
If the electronic representati on is not by means of a computer-generated image, it may consist of up to six views that must be submitt ed in one single JPEG fi le.
positi on JPEGGIFTIFPNGJFIF
A trade mark consisti ng of the specifi c way in which the mark is placed or affi xed on the product.
The mark shall be represented by submitti ng a reproducti on which appropriately identi fi es the positi on of the mark and its size or proporti on with respect to the relevant goods. The elements which do not form part of the subject-matt er of the registrati on shall be visually disclaimed, preferably by broken or dott ed lines. The representati on may be accompanied by a descripti on detailing how the sign is affi xed on the goods.
patt ern JPEGGIFTIFPNGJFIF
A trade mark consisti ng exclusively of a set of elements which are repeated regularly.
The mark shall be represented by submitti ng a reproducti on showing the patt ern of repeti ti on. The representati on may be accompanied by a descripti on detailing how its elements are repeated regularly.
colour (single)
JPEGGIFTIFPNGJFIF
A trade mark consisti ng exclusively of a single colour without contours.
The mark shall be represented by submitti ng a reproducti on of the colour and an indicati on of that colour by reference to a generally recognised colour code.
colour (combinati on)
JPEGGIFTIFPNGJFIF
A trade mark consisti ng exclusively of a combinati on of colours without contours.
The mark shall be represented by submitti ng a reproducti on that shows the systemati c arrangement of the colour combinati on in a uniform and predetermined manner, and an indicati on of those colours by reference to a generally recognised colour code. A descripti on detailing the systemati c arrangement of the colours may also be added.
UK IMPLEMENTATION OF TM DIRECTIVE
Type of mark Format required
Defi niti on Means of representati on
sound MP3JPEGGIFTIFPNGJFIF
A trade mark consisti ng exclusively of a sound or combinati on of sounds.
The mark shall be represented by submitti ng an audio fi le reproducing the sound or by an accurate representati on of the sound in musical notati on.
moti on MP4JPEGGIFTIFPNGJFIF
A trade mark consisti ng of, or extending to, a movement or a change in the positi on of the elements of the mark.
The mark shall be represented by submitti ng a video fi le or by a series of sequenti al sti ll images showing the movement or change of positi on. Where sti ll images are used, they may be numbered or accompanied by a descripti on explaining the sequence.
multi media MP4 A trade mark consisti ng of, or extending to, the combinati on of image and sound.
The mark shall be represented by submitti ng an audio-visual fi le containing the combinati on of the image and the sound.
hologram MP4JPEGGIFTIFPNGJFIF
A trade mark consisti ng of elements with holographic characteristi cs.
The mark shall be represented by submitti ng a video fi le or a graphic or photographic representati on containing the views which are necessary to suffi ciently identi fy the holographic eff ect in its enti rety.
Maucher Jenkins® is the joint trading name of RGC Jenkins & Co in the UK (regulated by IPReg)and Maucher Jenkins Patentanwälte & Rechtsanwälte in Germany
European Patent Att orneys | Chartered Patent Att orneys | German Patent Att orneysChartered Trade Mark Att orneys | Att orneys-at-Law | IP Liti gators
www.maucherjenkins.com
Also at Edinburgh | Cambridge | Basel | Nanjing
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ShenzhenRoom 1528, A8 BuildingNo. 1002 Keyuan RoadHigh Tech Park, Nanshan DistrictShenzhen 518057, ChinaT: +86 (0) 755 2876 5922F: +44 (0)20 7222 [email protected]
UK IMPLEMENTATION OF TM DIRECTIVE
