By the end of 2015, the European Parliament and the Council of the European Union (EU) adopted two legislation acts that fundamentally changed the trade mark legislation.
These two EU Trade Mark Legislation acts are:
• Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Council Regulation (EC) No 207/2009 on the Community trade mark and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market, hereinafter referred to as the Regulation
• Directive (EU) 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, hereinafter referred to as the Directive.
The Regulation and the Directive have changed and synchronized the trade mark legislation at European and at national level. They obliged the EU member states to bring their national legislations in line with the Directive.
One of the major changes is the new definition of the European Union trade mark, in result of which the requirement for graphic representation of the sign when filing application for an EU trade mark has been dropped since October 1st, 2017. European Union trade marks can now be represented in any appropriate form through available modern technologies, provided that their representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. This change gave birth to several new types of trade marks that have not existed so far along with the relevant requirements for their representation. These new types of trade marks are the position mark, the pattern mark, the motion mark, the multimedia mark, the hologram mark, and the sound mark represented by an audio file which was not possible until October 1st, 2017.
New Types of Trade Marks for EU Member States
The Position Trade Mark
The position mark is a mark consisting of the specific way in which the mark is placed or affixed on the goods. It shall be represented by a reproduction which identifies the position of the mark and its size or proportion with respect to the relevant goods. The representation may be accompanied by a description detailing how the sign is affixed on the goods. The representation has to be submitted in JPEG format. For example, if you are a manufacturer of shoes or bags, an example of such trade mark would be an image that shows where the mark is placed on the shoes or bags and what is its size in relation to them.
The Pattern Trade Mark
The pattern mark is a mark consisting exclusively of a set of elements (pattern) which are repeated regularly. It shall be represented by submitting a reproduction showing the pattern of repetition. The reproduction may be accompanied by a description detailing the way the elements are repeated regularly. The representation has to be submitted in JPEG format.
The Motion Trade Mark
The motion mark is a mark consisting of, or extending to, a movement or a change in the position of the elements of the mark. This type of mark shall be represented visually by a video file or by a series of sequential still images showing the movement or change of position. Where still images are used, they may be numbered or accompanied by a description explaining the sequence. The representation of the mark has to be submitted in JPEG or MP4 format.
The Multimedia Trade Mark
The multimedia mark is a mark consisting of, or extending to, the combination of image and sound. This type of mark shall be represented visually by submitting an audiovisual file containing the combination of the image and the sound. The file should be in MP4 format and may be accompanied by a description.
The Hologram Trade Mark
The hologram mark is a mark consisting of elements with holographic characteristics. This type of mark shall be represented visually by submitting a video file or a graphic or photographic reproduction containing the views which are necessary to sufficiently identify the holographic effect in its entirety. The representation of the mark has to be submitted in JPEG or MP4 format and may be accompanied by a description.
The Sound Trade Mark
The sound mark is a mark consisting exclusively of a sound or combination of sounds. Until October 1st, 2017 this type of mark could only be presented through musical notation, but with the abolition of the obligation for graphic representation of the sign it can now also be represented by an audio file reproducing the sound/melody. The representation of the mark has to be submitted in JPEG or MP3 format and may be accompanied by a description.
If you are interested in trade mark registration, also see: Trade mark registration and Classification of Goods and Services in Mark Registration
How the Directive Applies to EU Member States
The Directive obliged all EU Member States to bring their national legislations in line with it by adopting the abolition of the requirement for graphic representation of the mark in their laws.
The deadline expired on January 14, 2019.
Currently, 6 months later, Bulgaria has not changed yet its national Law on Marks and Geographical Indications /LMGI/ and according to Art. 9 of it a trade mark is a sign which is capable of distinguishing the goods or services of one person from those of other persons and can be represented graphically.
What are the consequences of this delay?
In relation to the Bulgarian state, the EU Commission may start infringement proceedings resulting in fines being imposed on Bulgaria.
With respect to those who would like to register some of the new types of trade marks as their national Bulgarian mark with effect on the territory of Bulgaria, the European court considers that the directive can produce a direct effect and bind the respective Member State when:
– the national law has not been changed in accordance with the directive,
– the terms of the directive are unconditional and sufficiently clear and precise;
– the terms of the directive give rights to individuals.
In the case of the Directive all three conditions are fulfilled and everyone has the right to refer directly to the Directive and apply for the registration of one of the above-mentioned new types of trademarks, without being represented graphically.
Meanwhile we hope to see Bulgaria bringing its national law in line with the Directive as soon as possible and until this becomes reality – the Bulgarian Patent Office to comply with the Directive and apply it with priority to the LMGI.
If I have not been able to answer all your questions about the new types of trade marks or if you hesitate and need help, I would be happy to assist you and can be contacted here.